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Association  for 
Information  and  Image 
Management 


MS303-1980 


6  7  8  9  10  11  12 

. . . 


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A  SELECTIVE  MICROFILM  EDITION 

'  PARTI 
(1850-1878) 


Thomas  E.  Jeffrey 

Microfilm  Editor  and  Associate  Editor 

Paul  B.  Israel  Susan  Schultz 

Assistant  Editor  Assistant  Editor 

Assistant  Editors:  Research  Associates: 

Toby  Appel  Robert  Rosenberg 

Keith  A.  Nier  W.  Bernard  Carlson 

Andre  Millard 

Student  Assistants 

John  Deasey  Pamela  Kwiatkowskl 

Leonard  De  Graaf  Joseph  P.  Sullivan 

David  Fowler  Barbara  B.  Tomblln 

Leonard  S.  Reich,  Associate  Director  and  Associate  Editor 
Reese  V.  Jenkins,  Director  and  Editor 


Sponsors 

Rutgers,  The  State  University  of  New  Jersey 
National  Park  Service.  Edison  National  Historic  Site 
New  Jersey  Historical  Commission 
Smithsonian  Institution 


University  Publications  of  America 
Frederick,  Maryland 
1985 


Copyright  ©  1 985  by  Rutgers,  The  State  University 

All  Rights  Reserved.  Mo  part  of  this  publication  including  any  portion  of  the  guide  and  index  or  of  the 
microfilm  may  be  reproduced,  stored  in  a  retrieval  system,  or  transmitted  in  any  form  by  any  means— graphic, 
electronic,  mechanical,  or  chemical,  including  photocopying,  recording  or  taping,  or  Information  storage  and 
retrieval  systems— without  written  permission  of  Rutgers,  The  State  University  of  New  Jersey,  New  Brunswick, 
New  Jersey. 

The  original  documents  in  this  edition  are  from  the  archives  at  the  Edison  National  Historic  Site  at  West 
Orange,  New  Jersey. 


BOARD  OF  SPONSORS 


Rutgers,  The  State  University  of 
Mew  Jersey 

Edward  J.  Bloustein 
T.  Alexander  Pond 
Tilden  G.  Edelstein 
Richard  P.  McCormick 
James  Kirby  Martin 
Mew  Jersey  Historical  Commission 
Bernard  Bush 
Howard  Green 


National  Park  Service,  Edison 
National  Historic  Site 
Roy  W.  Weaver 
Edward  J.  Pershey 
William  Binnewies 
LynnWightman 
Elizabeth  Aibro 
Smithsonian  institution 
Brooke  Hindle 
Bernard  Finn 


EDITORIAL  ADVISORY  BOARD 

James  Brittain,  Georgia  Institute  of  Technology 
Alfred  D.  Chandler,  Harvard  University 
Neil  Harris,  University  of  Chicago 
Thomas  Parke  Hughes,  University  of  Pennsylvania 
Arthur  Link,  Princeton  University 
Nathan  Reingold.  Smithsonian  Institution 
Robert  C.  Schofield.  Iowa  State  University 


CORPORATE  ASSOCIATES 

William  C.  Hittinger  (chairman),  RCA  Corporation 
•Arthur  M  Bueche.  General  Electric  Company 
Edward  J.  Bloustein.  Rutgers.  The  State  University  of  N  J. 
Cees  Bruynes.  North  American  Philips  Corporation 
Paul  J.  Christiansen,  Charles  Edison  Fund 
Philip  F.  Dietz,  Westinghouse  Electric  Corporation 
Paul  Lego,  Westinghouse  Electric  Corporation 
Roland  W.  Schmitt,  General  Electric  Corporation 
Robert  I.  Smith,  Public  Service  Electric  and  Gas  Company 
Harold  W.  Sonn,  Public  Service  Electric  and  Gas  Company 
Morris  Tanenbaum,  AT&T 


•Deceased 


FINANCIAL  CONTRIBUTORS 


PRIVATE  FOUNDATIONS 
Alfred  P.  Sloan  Foundation 
Charles  Edison  Fund 
The  Hyde  and  Watson  Foundation 
Geraldine  R.  Dodge  Foundation 


PUBLIC  FOUNDATIONS 

National  Science  Foundation 
National  Endowment  for  the  Humanities 


PRIVATE  CORPORATIONS  AND  INDIVIDUALS 


Alabama  Power  Company 
Amerada  Hess  Corporation 
AT&T 

Association  of  Edison  Illuminating  Companies 

Battelle  Memorial  Institute  Foundation 

The  Boston  Edison  Foundation 

Cabot  Corporation  Foundation 

Carolina  Power  and  Ught  Company 

Consumers  Power  Company 

Coming  Glass  Works  Foundation 

Duke  Power  Company 

Edison  Electric  Institute 

Exxon  Corporation 

General  Electric  Foundation 

Gould  Inc.  Foundation 

Gulf  States  Utilities  Company 

The  Institute  of  Electrical  &  Electronics  Engineers 

International  Brotherhood  of  Electrical  Workers 

Iowa  Power  and  Light  Company 

Mr.  and  Mrs.  Stanley  H.  Katz 


Matsushita  Electric  Industrial  Co.,  Ltd. 
McGraw-Edison  Company 
Middle  South  Services,  Inc. 

Minnesota  Power 

New  Jersey  Bell  Telephone  Company 
New  York  State  Electric  &  Gas 
Corporation 

North  American  Philips  Corporation 
Philadelphia  Electric  Company 
Philips  International  B.V. 

Public  Service  Electric  and  Gas  Company 

RCA  Corporation 

Robert  Bosch  GmbH 

Savannah  Electric  and  Power  Company 

Schering  Plough  Foundation 

Texas  Utilities  Company 

Thomson-Brandt 

Transamerica  Delaval  Inc. 

Westinghouse  Educational  Foundation 
Wisconsin  Public  Service  Corporation 


PUBLICATION  AND  MICROFILM 
COPYING  RESTRICTIONS 

Reel  duplication  of  the  whole  or  of 
any  part  of  this  film  is  prohibited. 
In  lieu  of  transcripts,  however, 
enlarged  photocopies  of  selected 
items  contained  on  these  reels 
may  be  made  in  order  to  facilitate 
research. 


A  NOTE  ON  THE  SOURCES 


The  pages  which  were  microfilmed  for  this  collection 
are  in  generally  good  condition  in  the  original.  There 
are  some  pages,  however,  which  due  to  age  do  not 
reproduce  satisfactorily.  We  have  made  every 
technical  effort  to  ensure  complete  legibility  of  each 
and  every  page. 


LITIGATION  SERIES,  1875-1878 


The  Litigation  Series  includes  the  printed  records  of  civil  court 
litigation,  along  with  the  records  of  Patent  Office  proceedings,  which  are 
similar  in  many  respects  to  litigation.  These  records  consist  of  pleadings, 
testimony,  exhibits,  attorneys'  briefs  and  arguments,  and  decisions  and 
opinions  of  the  court  or  hearing  examiner. 

During  the  1870s  Edison  was  embroiled  in  civil  litigation  relating  to 
his  quadruplex  and  automatic  telegraph  patents.  The  Litigation  Series 
reproduces  the  printed  record  of  one  of  the  lawsuits  contesting  the  patent 
rights  to  Edison's  quadruplex,  as  well  as  related  Patent  Office  proceedings 
which  preceded  the  civil  litigation.  Although  the  Edison  National  Historic 
Site  has  the  printed  record  of  only  one  of  the  suits,  the  "Quadruplex 
Case,"  the  exhibits  in  this  record  contain  documents  from  other  telegraph 
litigation  filed  about  the  same  time.  The  exhibits  also  include  technical 
drawings,  agreements,  patent  applications  and  issued  patents,  and 
correspondence.  Together  with  the  testimony,  they  provide  valuable 
information  about  the  development  of  multiplex  telegraphy,  Edison's  role 
as  an  inventor  and  manufacturer  of  telegraph  instruments,  and  the 
multifarious  financial  arrangements  which  supported  his  inventive  and 
business  activities. 

A  group  of  patent  interferences  constitutes  another  part  of  the 
Litigation  Series.  The  patent  examiner  placed  patent  applications  in 
interference  when  they  embodied  similar  claims.  The  inventors  were 
notified  and  each  was  allowed  time  to  take  testimony  and  collect 
evidence  that  would  establish  the  priority  of  his  own  work.  During  the 
1870s  Edison  was  involved  in  numerous  patent  interferences  concerning 
the  telephone,  the  telegraph,  the  electric  pen,  and  other  inventions. 
However,  the  ENHS  has  the  printed  record  only  for  those  interferences 
relating  to  the  invention  of  the  telephone. 

In  1878  several  of  Edison's  patent  applications  for  the  telephone 
were  declared  to  be  in  interference  with  applications  of  Alexander 
Graham  Beil,  Elisha  Gray,  A.E.  Dolbear,  and  others.  Testimony,  exhibits, 
and  arguments  supporting  the  priority  of  the  various  inventors  make  up 
the  printed  record.  As  in  the  telegraph  litigation,  the  testimony  of  Edison 
and  his  associates  and  the  technical  drawings  that  were  submitted  as 
exhibits  provide  extensive  documentation  of  the  inventive  activity  in 
Edison's  Newark  and  Menlo  Park  laboratories. 

Documents  relating  to  civil  court  and  Patent  Office  litigation 
occasionally  appear  in  the  Document  File  and  in  other  series  on  the 
microfilm. 

The  litigation  records  have  been  filmed  in  the  following  orders 

(1)  Telegraph  Litigation,  five  volumes. 

(2)  Telephone  Interferences,  seven  volumes. 


TELEGRAPH  LITIGATION  (QUADRUPLEX  CASES) 


The  five  volumes  in  this  series  relate  to  litigation  involving  several 
of  Edison's  patent  applications  for  duplex  and  quadruplex  telegraphy. 

Four  of  the  volumes  form  a  set  with  the  general  title  "Cases  and 
Points"  and  the  specific  title  "Quadruplex  Case"  on  their  spines.  They  are 
numbered  70,  71,  72  and  73.  Volumes  70,  71,  and  73  contain  a  record  of 
the  litigation  in  Atlantic  and  Pacific  Telegraph  Company  v.  George  B. 
Prescott,  Western  Union  Telegraph  Company,  Lemuel  W.  Serrell  and 
Thomas  A.  Edison  -  the  so-called  Quadruplex  Case.  This  suit  was  filed  in 
1876,  went  to  trial  in  1877,  and  was  decided  in  favor  of  the  defendants  in 
1878.  Volume  72  contains  Patent  Office  proceedings  for  1875  and  1876 
and  closely  related  litigation  which,  like  the  Atlantic  and  Pacific  suit, 
involved  the  question  of  rights  and  title  to  seven  Edison  duplex  and 
quadruplex  telegraph  patent  applications. 

The  four  Quadruplex  Case  volumes  were  apparently  given  to  Edison 
by  Everett  P.  Wheeler,  an  attorney  for  the  Atlantic  and  Pacific  Telegraph 
Company.  Each  volume  contains  Wheeler's  bookplate  bearing  the 
inscription  "Mr.  Edison,  from  his  friend  Everett  P.  Wheeler."  Volume  72 
has  been  filmed  first  in  the  sequence  because  most  of  its  documents 
relate  to  Patent  Office  proceedings  which  chronologically  precede  the 
Atlantic  and  Pacific  suit  contained  in  the  other  three  volumes.  The  four 
volumes  have  been  filmed  in  their  entirety,  with  a  few  exceptions  that  are 
identified  in  the  contents  lists  for  the  individual  volumes. 

The  fifth  volume,  entitled  Telegraph  Law  Cases-Miscellaneous.  is 
not  part  of  the  set  given  to  Edison  by  Wheeler.  It  contains  printed  copies 
of  bills  of  complaint,  answers,  arguments,  and  briefs  relating  to  Edison 
telegraph  litigation.  Many  of  the  items  in  this  volume  are  duplicates  of 
documents  in  the  Quadruplex  Case  volumes;  these  have  not  been  refilmed. 
Such  items  have  been  identified  in  the  contents  list  for  this  volume. 

A  very  complex  nexus  of  litigation  is  represented  in  these  five 
volumes.  In  addition  to  the  Patent  Office  litigation  and  the  main  case  of 
Atlantic  and  Pacific  Telegraph  Company  v.  Prescott  et  al.,  documents 
from  at  least  six  other  suits,  filed  during  1874-1878,  appear  in  these  five 
volumes  either  as  exhibits  within  the  Atlantic  and  Pacific  case  or  as 
individual  documents  in  the  volume  of  Telegraph  Law  Cases.  Most  of 
these  suits  relate  to  the  question  of  ownership  of  Edison's  quadruplex  and 
involve  Edison,  George  Harrington,  George  Prescott,  Western  Union,  and 
the  Atlantic  and  Pacific  Telegraph  Company  in  shifting  combinations  as 
plaintiffs  and  defendants. 

A  chronological  list  of  the  litigation  represented  in  the  four 
Quadruplex  Case  volumes  and  Telegraph  Law  Cases-Miscellaneous 
follows. 


A  Chronological  List  of  Litigation  Represented  by  Documents  in 
Quadruplex  Case  (QC)  Volumes  70-73  and  in  Telegraph  Law  Cases  (TLC) 


I.  Daniel  H.  Craig  and  James  B.  Brown  v.  George  Harrington,  George 
Little,  Thomas  A.  Edison,  the  Automatic  Telegraph  Company  and  the 
National  Telegraph  Company.  Superior  Court  of  the  City  of  New  York. 
October  8,  1874. 

1)  A  copy  of  the  Bill  of  Complaint  appears  as  Plaintiff's  Exhibit 
Z.8  in  Atlantic  and  Pacific  Telegraph  Company  v.  Prescott  et 
aL,  QC  vol.  70. 

II.  In  the  matter  of  the  application  of  George  B.  Prescott  and  Thomas  A. 
Edison  for  letters  patent,  dated  August  19,  1874;  opposed  by  George 
Harrington,  by  petition  dated  January  23,  1875.  (This  proceeding  is 
entitled  "Harrington  and  Edison  v.  Prescott"  on  some  of  the  documents.) 

1)  Letters  of  George  B.  Prescott  to  the  Commissioner  of 
Patents,  in  reference  to  the  inventions  conveyed  by  the 
assignment  of  Thomas  A.  Edison  for  duplex  and  quadruplex 
telegraphy.  QC  vol.  72. 

2)  Argument  for  Prescott.  QC  vol.  72. 

3)  Argument  on  behalf  of  Edison.  QC  vol.  72. 

4)  Statement  of  George  Harrington  of  his  relation  with  Thomas 
A.  Edison,  and  his  improvements  of  fast  telegraphy.  QC  vol.  72. 

III.  Western  Union  Telegraph  Company  v.  Thomas  A.  Edison  and  George 
B.  Prescott.  In  Chancery  of  New  Jersey.  January  28,  1875. 

1)  Bill  of  Complaint  and  Injunction.  TLC.  A  copy  of  the  Bill  of 
Complaint  only  appears  as  Exhibit  Z.6  in  Atlantic  and  Pacific 
Telegraph  Company  v.  Prescott  et  al.,  QC  vol.  70. 

2)  Answer  of  Thomas  A.  Edison.  QC  vol.  72. 

IV.  In  the  matter  of  the  appeal  of  Edison  and  Harrington  from  the 
decision  of  the  Commissioner  of  Patents  of  March  20,  1875,  to  the  Hon. 
the  Secretary  of  the  Interior.  (This  proceeding  is  entitled  "Harrington  and 
Edison  v.  Prescott"  on  some  of  the  documents!) 


1)  Argument  for  Edison.  QC  vol.  72. 

2)  Argument  of  Smith  and  Redington  of  counsel.  QC  vol.  72. 

3)  Brief  in  behalf  of  Edison  by  Benjamin  Butler.  QC  vol.  72. 

4)  Brief  in  behalf  of  George  Harrington.  QC  vol.  72. 


[List  of  litigation,  p.  2] 

5)  Reply  of  counsel  for  Prescott  to  the  respective  briefs  of 
counsel  for  Edison  and  Harrington.  TLC. 

6)  Brief  in  behalf  of  Harrington,  in  reply  to  briefs  of  counsel  for 
Prescott.  QC  vol.  72. 

7)  Affidavit  of  Thomas  A.  Edison  in  regard  to  his  inventions  of 
duplex  and  quadruplex  telegraphy.  Notarized  April  27,  1875. 

(This  item  may  be  related  to  the  1875  Western  Union  v.  Edison 
and  Prescott  litigation  rather  than  to  the  Patent  Office  appeal.) 
QC  vol.  72. 

8)  Argument  for  Prescott.  This  is  a  separate  14  page  pamphlet 
not  found  in  the  five  bound  volumes.  It  has  been  filmed 
immediately  following  QC  vol.  72. 

V.  In  the  matter  of  charges  preferred  by  George  B.  Prescott  against  Z.F. 
Wilber,  a  Principal  Examiner  in  the  United  States  Patent  Office. 

1)  Letter  of  George  B.  Prescott  to  the  Hon.  R.  Holland  Duell, 
Commissioner  of  Patents,  preferring  charges  against  Z.F.  Wilber, 
a  Primary  Examiner  in  the  United  States  Patent  Office. 
December  18,  1875.  QC  vol.  72. 

2)  Brief  of  George  B.  Prescott.  QC  vol.  72. 

3)  Statement  and  brief  of  Z.F.  Wilber,  accompanied  by  critical 
and  explanatory  notes  by  Prescott.  QC  vol.  72. 

VI.  Atlantic  and  Pacific  Telegraph  Company  v.  George  B.  Prescott, 
Western  Union  Telegraph  Company,  Lemuel  W.  Serrell  and  Thomas  A. 
Edison.  Superior  Court  of  the  City  of  New  York.  April  11,  1876.  (The 
"Quadruplex  Case"  presented  in  volumes  70,  71  and  73). 

1)  Amended  Bill  of  Complaint.  May  21,  1877.  QC  vol.  70. 

2)  Answer  of  George  B.  Prescott.  May  13,  1876.  QC  vol.  70. 

3)  Answer  of  Thomas  A.  Edison.  1876.  QC  vol.  70. 

4)  Answer  of  Western  Union  Telegraph  Company.  May  28, 

1877.  QCvol.  70. 

5)  Answer  of  George  B.  Prescott  to  Amended  Bill  of 
Complaint.  May  28,  1877.  QC  vol.  70. 

6)  Plaintiff's  Exhibits.  QC  vol.  70. 

7)  Testimony  for  Plaintiff.  QC  vol.  70. 

8)  Testimony  for  Defendants.  QCvol.  71. 


[List  of  litigation,  p.  3] 


9)  Defendants' Exhibits.  QC  vol.  71. 

10)  Plaintiff's  Testimony  in  Rebuttal  and  Exhibits  put  in  on 
cross-examination  of  Defendants'  Witnesses.  QC  vol.  70. 

11)  Briefs,  Arguments,  Statements  of  Facts  and  Points.  QC 
vol.  73. 

12)  Findings.  3une  3,  1878.  QC  vol.  73. 

13)  Opinion.  Sanford,  3.  3une  3,  1878.  QC  vol.  73. 

VII.  Thomas  A.  Edison  and  George  Harrington  v.  Western  Union 
Telegraph  Company;  George  B.  Prescott:  the  Honorable  R.H.  Duell. 
Commissioner  of  Patents;  and  the  Honorable  Z.  Chandler,  Secretary  of 
the  Interior.  Supreme  Court  of  the  District  of  Columbia.  May  11,  1876. 

1)  Bill  of  Complaint.  Appears  as  Exhibit  17  with  the  Bill  of 
Complaint  in  Western  Union  v.  Harrington,  Edison  et  al.  TLC 
(See  numeral  X  below). 

2)  Brief  on  behalf  of  Complainants.  TLC. 

VIII.  George  Harrington  and  Thomas  A.  Edison  v.  Atlantic  and  Pacific 
Telegraph  Company  and  3ay  Gould.  Southern  District  of  New  York.  May 


1)  Bill  of  Complaint.  Appears  as  Defendants'  Exhibit  35  in 
Atlantic  and  Pacific  Telegraph  Company  v.  Prescott  et  al.  QC 
vol.  71  (See  numeral  VI,  9  above). 

IX.  Thomas  A.  Edison  and  George  Harrington  v.  Western  Union  Telegraph 
Company  and  George  B.  Prescott.  Southern  District  of  New  York. 

October  23,  1876. 

1)  Bill  of  Complaint.  Appears  as  part  of  Exhibit  18  with  the 
Bill  of  Complaint  in  Western  Union  v.  Harrington.  Edison  et  aL 
TLC  (See  numeral  X  below). 

2)  Demurrer  of  Western  Union.  February  5,  1877.  Appears  as 
part  of  Exhibit  18,  cited  above,  TLC. 

3)  Demurrer  of  George  B.  Prescott.  February  5,  1877.  Appears 
as  part  of  Exhibit  18,  cited  above,  TLC. 


[List  of  litigation  p. 


X.  Western  Union  Telegraph  Company  v.  George  Harrington;  Thomas  A. 
Edison;  Atlantic  and  Pacific  Telegraph  Company;  3ay  Gould;  Samuel  Mills; 
and  Josiah  C.  Reiff;  Thomas  A.  Edison,  William  M.  Seyfert,  William  3. 
Palmer,  Henry  L.  Dallett,  3r„  Augustus  B.  Ward,  and  Robert  W.  Russell  as 
Trustees  of  the  American  Automatic  Telegraph  Company;  and  George  B. 
Prescott.  Superior  Court  of  the  City  of  New  York.  February  21,  1877. 


1)  Summons  and  Bill  of  Complaint.  TLC. 

2)  Affidavits  and  Injunction  Order.  TLC. 


Other  Documents  at  the  Edison  National  Historic  Site 
Relating  to  Telegraph  Litigation  (Not  Filmed) 


In  addition  to  the  five  microfilmed  volumes  of  telegraph  litigation, 
the  Edison  National  Historic  Site  also  has  several  other  bound  volumes  and 
printed  briefs  relating  to  the  case  of  George  Harrington  and  Thomas  A. 
Edison  v.  Atlantic  and  Pacific  Telegraph  Company  and  Jay  Gould,  which 
was  kept  alive  in  the  federal  courts  until  1913.  (The  bill  of  complaint  in 
this  suit  appears  as  Defendants'  Exhibit  35  in  Quadruplex  Case  Volume  71 
on  the  microfilm.) 

Exhibits  and  testimony  from  a  1905  hearing  in  the  federal  court  for 
the  Southern  District  of  New  York  appear  in  a  450-page  volume  entitled 
Pleadings,  Depositions  and  Proofs  for  Final  Hearing.  After  deciding  in 
favor  of  Harrington  and  Edison,  the  district  court  referred  the  case  to  a 
Master  who  was  to  conduct  an  accounting  and  fix  damages.  Testimony 
and  exhibits  from  this  proceeding  appear  in  an  814-page  volume  entitled 
Testimony  Before  the  Master.  The  archive  at  the  Edison  National 
Historic  Site  also  contains  printed  copies  of  briefs  relating  to  subsequent 
appeals  of  this  case  to  the  U.S.  Circuit  Court  of  Appeals  and  the  U.S. 
Supreme  Court. 


QUADRUPLEX  CASE  VOLUME  72  -  CONTENTS 


Hodg«?rlty  °f  InVention*  Reducin8  an  Invention  to  Practice  by  S.A. 

pa™Phl!it  reprinted  from  the  American  Law 
Register  for  October  and  November,  1  %72.  - - 

referen^rL°fh»e-0rge5’  Prescott  to  the  Commissioner  of  Patents  in 

z.zr^L . 

9  page?.  EXam,ner  ln  the  United  States  Patent  Office.  December  18,  1875. 
Patent  Office.  [1876].  34  pages.  ?  Examlner  ln  the  United  States 

against  Wilber.TlIVe"] 55^1°'  Charge$  Pfeferred  by  Prescott 

B.  P^Zeandf°4om^rASCp^  in  tbe  7,atter  of  the  application  of  George 
i S7heSC0tt  .n?  Thomas  A.  Edison  for  letters  patent,  dated  August  1 9  8 
^fpage^05  Y  Ge°rge  HarrinSt°n-  b7  Petition  dated  January  23,  1875. 

LrrfrfT61?  f°r  u ' r*  Edi.s?n  in  the  matter  of  the  appeal  of  Edison  and 

20,  1875°to  the1  Hon  °t the  Commissioner  of  Patents  of  March 

pages.  ’  Secretary  of  the  Interior.  May  4,  1875.  15 

S:  hssiss 'omS"  r.^n';tH“rine“"  *nd  “**>" 
sstsiss  “r“ ■«» 

patent  to  issue  to  himself  and  George  Harrington.  [1875].  58  pages. 


[QC  vol.  72  contents,  p.  2] 

12.  Brief  in  behalf  of  George  Harrington  in  the  matter  of  Harrington  and 
Edison  v.  Prescott,  upon  application  to  the  Honorable  the  Secretary  of  the 
Interior  for  certain  letters  patent  to  issue  to  Thomas  A.  Edison  and 
George  Harrington.  [1875].  9  pages. 

13.  Reply  of  counsel  for  Mr.  George  B.  Prescott  to  the  respective  briefs 
of  B.F.  Butler,  Esq.,  counsel  for  Edison,  and  John  H.B.  Latrobe  and 
Leonard  Myers,  Esqs.,  counsel  for  Mr.  Harrington,  in  the  matter  of  the 
appeal  of  Edison  and  Harrington  from  the  decision  of  the  Commissioner  of 
Patents  of  March  20,  1875,  to  the  Secretary  of  the  Interior. 

Not  filmed.  Another  copy  with  annotations  in  Edison's  hand  is 
filmed  in  Telegraph  Law  Cases. 

14.  Brief  in  behalf  of  George  Harrington,  in  reply  to  the  briefs  of  counsel 
for  George  Prescott  in  the  matter  of  Harrington  and  Edison  v.  Prescott, 
before  the  Secretary  of  the  Interior.  [1875].  7  pages. 


15.  Bill  of  Complaint  and  Injunction.  Western  Union  Telegraph  Company 
v.  Thomas  A.  Edison  and  George  B.  Prescott.  In  Chancery  of  New  Jersey. 
January  28,  1875. 

Not  filmed.  Another  copy  with  annotations  in  Edison's  hand 
is  filmed  in  Telegraph  Law  Cases. 


16.  Answer  of  Thomas  A.  Edison.  Western  Union  Telegraph  Company  v. 
Thomas  A.  Edison  and  George  B.  Prescott.  In  Chancery  of  New  Jersey. 
May  20,  1875.  29  pages. 

17.  Rules  of  Practice  in  the  United  States  Patent  Office.  September 
1875.  72  pages. 

18.  Affidavit  of  Thomas  A.  Edison  in  regard  to  his  inventions  of  duplex 
and  quadruplex  telegraphy.  April  27,  1875.  21  pages. 

19.  Telepost.  A  System  of  Automatic  Rapid  Telegraphy.  Advance 
Prospectus  No.  6538.  Undated;  ca.  1907-1908. 

A  12  page  circular  containing  information  on  the  Telepost 
system.  Its  developer,  Patrick  B.  Delany,  was  an  associate  of 
Edison's  in  the  Automatic  Telegraph  Company  during  the  early 
1870s. 


20.  Argument  for  Mr.  Prescott  in  the  matter  of  the  appeal  of  Edison  and 
Harrington  from  the  decision  of  the  Commissioner  of  Patents  of  March 
20,  1875,  to  the  Honorable  the  Secretary  of  the  Interior.  14  pages. 

Although  this  pamphlet  is  not  bound  in  Volume  72,  Prescott's 
argument  is  part  of  the  Patent  Office  proceedings  involving 
the  title  to  Edison's  duplex  and  quadruplex  patent  applications 
and  has  therefore  been  filmed  with  related  documents  in  this 
volume. 


PRIORITY  OP  INVENTION. 


[Reprinted  from  the  American  Law  Register  for  October 


rmoniTY 


INVENTION. 


pon  which  it  is  to'oporato,  and  the  moans  by  which  it  is  to 
o  carried  into  cOcct.  »  . 

2.  Another  thing  to  ho  considered  is  the  iongtlx  of  timo 
Inch  a  man  may  spnd  in  maturing  his  device,  and  still 
laintain  his  right  to  It  over  others  who  mennwliilo  light  upon  • 
t  and  reduce  it  to  practico.  Tlioro  is  evidently  no  absolute 
imit  to  bo  measured  by  days  or  yonrs,  ns  was  in  effect  ob- 
erved  by  Judge  Woodbukv.  No  such  limit  can  bo  pro- 
cribcd;  tlioro  may  bo  mnoliinos  so  complicated  ns  totako  tlio 
riginator  all  his  dnys  to  complote  them.  Babbage,  with  his 
^surpassed  ingenuity  and  industiy,  left  his  most  important 
ne  unfinished  for  want  of  timo.  lnvontors  of  this  ordor  will 
lot  often  linvo  rivals,  however  ;  mid  controversies  will  rarely 
rise  in  which  it  will  bo  necessary  to  givo  nny  such  latitude 
o  tho  rulo.  The  character  of  tho  improvement  will  usually 
iirnish  n  sufficient  oritorion  n3  to  tlio  tim6  which  may  bo 
llowed  for  elaborating  it.  Tho  inventor  should  undoubtedly 
mve  all  that  is  fairly  requisite  for  removing  whatovor  dim- 
sultics  hinder  tlio  successful  working  of  his  dovieo.  It  seems 
reasonable,  also,  that  ho  should  bo  allowed  to  complete  such 
Dthcr  inventions  as  nro  connected  with  it  so  closely  that  thoy 
nro  essential  to  its  advantageous  operation. 

There  is  hut  one  qualification ;  tho  diligence  must  be  ren- 
lonnblo.  This  is  generally  considered  to  admit  of  tho  pursuit 
being  suspended  when  sickness,  destitution,  or  other  hin¬ 
drances  beyond  control,  prevent  its  being  prosecuted.  It 
must  not  bo  understood  that  a  man  may  Tny  it  aside  while 
engaged  in  othor  occupations,  because  thoy  nre  more  premia-  . 
ing.  Tho  following  remarks  of  Judge  Mebbick,  made  in 
Widtenham  v.  Singer,  Sup.  Court  of  Hist,  of  Columbia,  will 
^r  repenting  here,  since  tlioy  are  almost  the  only  ones; 
“qunent  to  tho  subjects  which  linvo  appeared  in  print. 
The  measure  of  poverty,"  (property)  “  which  orio  must  pos¬ 
sess  boforo  ho  is  required  to  oxoroiso  nny  diligence  to  prosecute 
his  rights  is  not  to  bo  found  in  tho  statute.  It  is;  an  oxcuse 
vory  readily  mndo,  which  yot  should  not  be  too  readily,; 
istoned  to.  If  a  man  bo  utterly  destitute  of  money,  without 
frionds,  and  incnpablo  thereby  of  prosecuting  an  enterprise, 
much  indulgence  may  bo  shown  him ;  but  where  ho  has  the 
moans  of  carrying  on  enterprises  ,of  a  kindred  sort,  equally.: 
do„manding  monoy  nnd  friends,  and  does  carry  them  on, :  his 
ol  ction  topursuo  those  othor  enterprises  will  not  be  regarded 
in  the  law  as  an  oxeuso  for  tho  dolay  in  tho  one  where  valu¬ 
able  rights  of  othors,  equally  moriforious  ns  himsolf,  and  in  the 
outset  of  thoir  successful,  strugglo,  .  equally  poor,  are  to  be 
prejudiced.  An  election  thus  mndo  for  his  supposed  advan- 


PRIORITY-  OF  INVENTION, 


PRIORITY 


tnge  or  gratification  at  tlio  time,  according  to  tho  plainest 
principles  of  equity,  must  not  bo  invoked  to  the  detriment  of 
another  innocent  party."  This  extract  ombodics  in  n  vorv 
good  degree  the  spirit  tvhioh  should  govern  in  determinm* 
questions  like  tlioso  under  consideration  8 

Nearly  all  the  general  principles  which  have  bcon  here 
7  wX683Cr0  Woolen  Co.v.  JorJ™ 

sfsSSp'-pas 

industry.  Whore  two  ®»r  with  proiier; 

been  dm  first  to  conceive  of  flbnim  ‘0lr  t“los  upon  hav'"8i 
will  be  determined  in  favor  of  thn  n^’T01"0'1!’  tho  uollto3t 
without  unreasonable  interrupt, ?0° ^  ,“n  sh|°'v1<lil,eon,c8i 

earliest  poriod,  provided-he  t  en  *  g:  1?lck  to  tho 
the  device.  en  aa(* ln  view  the  germ  of; 

wlmteKKi!:^  that  every  one 

two  years  for  coini)]otinfr;».  \iIn4V?lll,.oa  lH  entitled  to  take 
olso  can  forestall  him  ofVs’riim  |  “nng  |hat  l10rioJ  »°  ono 
to  practice,  though  ho  has  patent  by  reducing  it ; 

This  is  evidently  derived  from  t?r  ^  “plated  it  meanwhile.  \ 
1870,  corresponding  to  to n  24-U  8aotio11  of  Ret  of  ! 
tho  act  of  1839.  fn  this  se^Ho""011 lho  ,7tl‘  seotion  o^’ 
scribed  which  must  bo  r  1 '  c?r,tm.n  conditions  are  r* 

I 

allord  tho  least  ground  for.  the  imm™  •  *  '  ?!"8  does  not  ' 
mentioned.  It  relievos  an :invento?Tn  wl,,oh  luw  been  i 
presumption  of  having  donated  Ids  (L  °  exlo,lt  from  tho  ! 

But't  r  d t°i!,or'vi80  “*0  from  h  8 “ellTn '°  tie  pubI,V  ■ 
But  it  does  not  dispense  with  his  n.i„„  fie,,Ing  or  using  it!-  ' 
m  perfecting  it,  nor  remit  tho  Zaltv  diligonco'  ■ 

gence  It  waives  the  right “ffffe'-fjo  ] 


forfeiture  ho  inours  by  suoh  sale  or  uso,  but  it  does  not  inter- 
Tero  between  him  and  his  rivals,  nor  undertako-to  impair  the 
right  they  may  acquire  by  their  superior  diligence.  Tho 
[first  to  invont  is  prima  facie  entitled  to  a  patont.  I  bo  law 
[says,  howovor,  that  one  who  conceived  it. previously  slinll  bo 
[preferred  to  him,  .upon  this  condition,  that  bo  lias  .used  ren- 
[sonablo  diligence  iu  adapting  and  .perfecting.  Is  this  eondi-  . 
Rion  dispensed  with,  because. tho  statute  rcliovcs  one  who  bus 
Isold  or  used  tho  invention  for  two  years  from  tho  eliargo  ol 
shaving  abandoned  it?  There  is  not  tho  remotest  connection 
[between  these  several  provisions  of  tho  statute ;  nnd  there  is 
fco  foundation  for  the  notion  that  tho  inventor  who  wishes  to 
[maintain  his  titlo  to  a  dovico  which  has  occurred  to  him,  need 

plot  enter  upon  the  elaboration  of  it  .for  two  years. 

II.  -Tho  next  in  right  among  sovoral  claimants  or  an  in¬ 
vention, is  ho  who  was  'tho -first  torodueoit  to  practice.  Pri- 
Lma  facie,  as  it  is  sometimes  .expressed,  tlio  first  to  put  in 
practice  is  the  one  ontitled  to  a  patont.  Ho  gives  place  to 
[  no  one  elso  oxcept  tho  one  whoso  titlo  has  boon  already  dis¬ 
cussed  Evon  n  patent  in  tho  hands  of  his  rival  cannot  pre¬ 
judice  him.  This  wns  so  well  assorted  by  Judge  Sprague, 
in  Johnson  v.  Root,  1  Fish.  351,  that  his i  language  should  be 
repeated:  “If,  gontlomen,  the  invention  was  perfected,  as  I 
have  ulrendy  said,  or  if  not  perfected,  if  Mr.  Johnson  used 
reasonable  diligence  to  porfect  it,  then  lio  lmd  a  right  to  have 
it  incorporated  into  his  patent,  nndto  supersede  those  who 
had  intervened  between  his  first  invention,  or  discovery,  nnd 
■his  subsequent  Inking  out  of  his  patent.  If  lie  lmd  not  per¬ 
fected  it,  nnd  did  not  uso  duo  diligenco  to  carry  it  into  elleet,  and 
in  the  meantime,  boforo  ho  got  his  patent,  somobody  olse  lmd 
invented,  and  used,  nnd  incorporated  into  a  .usoful,  praoticnl 
..maobino  tlintmode  of  feeding,  tbon  ho  could  not  by  a  subse¬ 
quent  patont  appropriate  to  himself  what  was  embraced  in 
the  former  mncliino,  botwoon  bis  onvont  nnd  tlio  obtaining  oi 
ibis  patent,”  p.  869.  Hero  wo  have  recognized  not  only  Lho 
suporior  right  of  tho  first  to  concoivo  who  has  boon  indus¬ 
trious  in  maturing,  over  one  who  was  first  to  reduce  to  prne- 
tice,  but  also  tho  superior  right  of  tlio  lattor  ovor  tlio  first  to 
conceivo,  if  ho  has  bcon  remiss,  as  well  as  over  the  putentee. 
Tho  snmo  viows  wore  enuncintcd  by  Judgo  Uai.l,  in  Ransom 
v  Manor.  1  Pish.  262,  ns  this  excerpt  from  bis  decision  will 
ahow  :  “If  the  plaintiff -did  not  uso  reasonable .  diligenco  to 
porfeot  tho  invention  patented  after  tho  ulen  or  ltwns  lirst 
concoivcd,  and  in  tbo  monntimo  other  persons  not  only  con¬ 
ceived  tho  idea,  but  perfected  tlio  mvontion,  and  practically 
appliod  it  to  public  uso,  boforo  the  invention  of  the  plnintilt 


hud  been  so  fnrporfcotccl  that  it  could  bo  applied  to  practical? 
use,  the  plmntifls  patent  is  void,  becauso  tlioy  were  not  tho 
first  and  original  invontors  of  tho  thing  patented.”  p?  272  It 
is  unnecessary  to  make  other  citations  to  establish  the  doe- 
trmes  set  forth  m  the  previous  pages,  or  to  explain  them. 

It  is  not  projiosod  to  mquiro  at  this  time  wherein  consists: 
S  E8  “  JnvoiUion,  or  putting  it  in  use,  or  reducing 
£‘°  prfv°‘‘ce'  * 1,0,1  18  sP°hen  oi  in  tho  extmets  which  have:' 
m  lgi  lh“  “““"“‘•on  of  that  subject  is  postponed 
"  ?  Is  the  present'  pur-  > 

Son  1  itJ!n?°ublcd  y  rcclllires  that  the  iuven- 

ur*ouldrl]'Zcdl«ci°t  irpubl’icrrumy 

should,  m  order  to  bis  consistent  with  themselves,  as  well  as 
in  nceordanco  with  tho  system  of  patent  laws 
tJ:  ‘  b“  P'.oJ’f  V  been  observed  tliat  only  two  stages  ofroa-  i 
turity  to  which  an  invention  may  bo  brought  are  recognized  5 
of  .,leso.l,nSos'  thus  far,  as  having  any  bearing  upon  the  rights 

of  he  mven tor;  one  in  which  he  has  distinctly  eSed 
h  stl  b  ncly  r  °l?;a,,(,m  Upon  "htotoiOtimiuoly  attains 
V'S  obJ.ect-  right  to-do  it  at  this  time  is  contingent  and 

other  idS  rlmnl"  1  1,g°T  bri%ri,,S  il‘o  perfection.  ’l’ho 
other  is  when  ho  has  made  a  practical  working  machine  om- 

*  Hisytit£  to  ittsail“nd  ^"S10mp,Td  U  in  “otual  operation. 

'  1118  t0  11 18  then  absolute,  and  can  never  be  impugned  bv 
toyboUnaXrni  fSl!0Vnr0r-i  This  is  undoubtedly  the  latrine  , 
Irt  nT  Zd-f?1i1°  decisions  of  the  .courts.  Nothing/ 
s “Oi  ‘  Of  what  is  technically  called  a  reduction  to  practical 
previously  achieved,  will  enable  one  to  sustain  a  oatSS 

ofthfuJund^r^n  ArYvl‘0,nov,°r  “  Intent  is:JLiijecK 

limt  ot,llors  ,lmtl  mndo  ‘ho  invention  before  tho 
MS tho  .dofons?  llas  al'V“J;8  been  hold  to  strict  proof  that  ? 
the  prevu.ua  invention  was  in  like  manner  reduced  to  prae- 
the  1n?mStlPP°  p  °t  t,  "a’  O  13  0,loll8h  on  this  occasion  to  quote  !i 
K  h  ltW"1'.80  Spragok,  in  mu*v.,UrUUrwaod,\  i 
idp,h-h1G°r  T  "S  .ls  >m1P°r‘«»‘  ‘o  bo  understood,  beeauso  the  ; 
idea  has  been  earned  all  a  ong,  that  if  a  prior  Inventor  has  : 
gone  to  a  certain  extent,  although  lie  fall  short  of  making  a 
complete  machine,  practically  useful,  those  who  eomo  a^or 
have  no  ngh  to  secure  to  themselves  the  advantage  of  the 
invention.  .Ill  is  is  not  law.”  p.  100.  If,  indeed,  either  party 
robes  upon  having  eoneoived  iho  idea  boforo  the  othcr'ancl 


viuca  mat  t lio  idea  upon  which  it  depends  was  distinctly 
prohoiulcd.  This  is  ono  of  the  jjeriods  to  which  tho  law 
tachcs  significance.  Tho  only  other  ono  recognized  in 
judicial  tribunals  is  when  it  has  been  carried  into  pracl 

III.  Tho  rights  of  patentees  arc  next  to  be  considered. 

These  requiro  no  sup|x>rt  from-  decisions.-  Thoy  are 
Ixxlictl  in  tho  grant,  and  arc  established  unci  defined  un 
the  authority  of  tho  national  legislature.  They  need  onlj 
bo  discussed  in  order  to  doterinmo  under  what  cireumstm 
thoy  must  yield  boforo  tlioso  of  a  competitor.  It  is  not 
design  of  this  paper  to  treat  of  all  tho  defenses  which  n 
bo  set  up  against  an  action  for  an  infringement.  But 
have  scon  that  a  patentee  must  give  way  before  ono  who 
reduced  the  invention  to  praotioo,  and  that  both  must  yi 
to  tho  ono  who  has  conceived  before  either  of  thorn,  and 
been  industrious  in  bringing  it  to  perfection. 

Although  an  inventor  1ms  no  remedy  against  those  w 
use  his  discovery  until  he  obtains  a  patent,  without  which 
has,  indeed,  no  rights  in  it  which  tho  law  will  recognize,  il 
by  no  means  essential  that  be  should  lmvo  one  in  order 
defeat  a  suit  brought  by  another  patentee,  who  made  the 
vention  after  him.  It  is  enough  to  show  in  defense  that 
reduced  tho  invention  to  practice  before  tho  plaintiff  . 
was  said  by  Judge  WooDMjnv,  in  Coll  v.  Mm,  Arms  Co. 
Pish.  108 :  u  The  foundation  is  struck  from  under  the  feet 
the  plaintiff  if  tlio  defendant  is  able  to  show  that  there  wc 


practice,  find  that  mnttor  is  to  bo  examined  horoafter.  in  an- 
otlior  nrticlo.  When  wo  come  to  inquire  liow  controversies 
between  rival  mvontors  aro  settled  in  the  Patent  Offico,  wo 
shall  had  more  room  for  doubt. 

I  do  not  propose  at  present  to  examino  at  length  into  the 
deoisions  ol  the  1  atont  Offico,  and  of  tbo  Appellate  Tribunal, ? 
the  District  Court,  now  tiio  Supremo  Court  of  the  District 
ol  Columbia.  It  would  not  bo  easy  to  reconcile  them,  nor  is 
it  nil-important  for  our  purpose.  It  is  sufficient  to  deduco  . 
from  thorn  two  rules  which  may  bo  considered  ns  well  ostab- S 
h0U8l‘  not  “  Pensively  npplicd| 
Ono  of  these  is  that  tbo  earliest  ono  to  apply  for  a  patent  - 
is  presumed;  to  be  the  first  inventor,  until  Wo  wntran'k 

St  i"  JtiLn’o,1& in-  ihii 

siasfc- 

v.  Itwhardson,  Commr.  Detl.  1870, p.  81.  The  filing  of  an 
W^fonis,  furthermore,  the  most  cflcctunl  stop  toward  i 
®“,nrnu.''icntmg  tbo  bonofits  of  tbo  discovery  to  the  world  "< 
It  lias, m  fact/  all  the  morits  that  a  rcdiietion  to  prnotico  was"  ' 
pi  o viously  intended  to  securo.  Accordingly,  it  is  sometimes 
Sf™  °f  .M. "  reduction  to  practice,  and  regarded  as  vesting 
tbo  samo  ngbts  and  privileges  in  tbo  applicant.  °  - 

tbc  Pa.m  'nn-  -10.,^  .olimi"^d  from  tlm  proceedings  of 
the  1  atont  Office,  is  that  m  ordor  to  establish  priority  of  in- 
•  ventiOn  it  is  necessary  to  show  a  reduction  of  the  device  to 
form,  consisting1  in  tbo  embodiment  of  it  in  some  such  sliaiio  ! 

frbmdt  ob^nrant'1  *5?*  b,m'<l1*  o6ultl  construct  tbo  apparatus  | 
iromit,  or  practice  the  process  contomphitbd.'  In  this  respect  •; 

a  sneuWlmrinrn“nC0  ,B0 Yoral  d«oi?ions  which  require  that  \ 

f  published  description,  which  is  relied  upon  ■ 
to  defeat  a  patent,  should  be  equally  full  and  oxplioit.  It  ‘is  - 
iPnl„rl‘°iapf k  °f  T1  nn  embodiment  ns  a  rcSnoing  ofan 
*?  foT'  aijd  bonce  to  infer  that  this  is  all  that  is  I 
intended  when  the  phrase  is  used  iir  the  reports.  » It  signiflS  I 


1'nonymous  with  reducing  to  ]irnotico.  Judge  Stoht,  fo 
istaneo,' says  in  Heed  v.  Cutter,  1  Story  590:  “In  a  rnco  o: 
iligcnco  between  two  independent  inventors,  lie  who  firs 
sduccs  liis  invention  to  a  fixed,  positive  and  practical  form 
ould  scorn  to  bo  outitlod  to  a  priority  of  right  to  a  paten 
lorofor."  p.  599.  On  the  other  hand,  bo  says  in  tbo  saihi 
nso:  “Under  ourpatont  laws,  no  porson,  who  is  hot  at  onci 
10  first  ns  woll  as  original  inventor,  -by  whom  the  invontioi 
ns  been  put  in  actual  uso,  is  entitled  to  a  patent.”  p.  598 
o  that  to  ontitle  himsolf  to  a  patent  by  reducing  liis  idei 
i  form,  tho  invontor  must  also  linvo  put  it  in  actual  use.' 
However  just  and  well  founded  theso  rules  may  bo,  wlion 
roporiy  applied,  thoro  can  bo  no  doubt  but  that  tlioy  have 
ion  carried  too  far,  on  somo  occasions.  When  tlio  title'  oi 
patentee  lias  boon  sut  nsido,  and  the  rights  of  ono  who  hni 
been  tbo  first  to  put  'an  invention  in  nutunl  uso  h'nvo  boot 
isregarded  in  favor  of  him  who  had  moroly  rondo  a  drawing 
:  n  model  showing  tlio  device,  it  is  evident  that'  the  dccis 
■ns  of  "tho'  courts  liiive  beon  ontiroly  overlooked,  and  the 
Tico  lias  proceeded  in  granting  patents  upon  principles  alto- 
3tlier  different  from  those  wliicli  prevail  in  tho  judicial  tri- 
unals  of  tho  country. 

When  a  judgo  is  considering  tho  validity  of  n  patent  wliioli 
vs  been  assailed  for  want  of  novelty  in  tho  invention,  ant 
lien  tho  Patent  Office  is  called  upon  to  determine  whcthoi 
will  issuo  a  patent  for  an  invention  for  which  it  lias  already 
-anted  one,'  or  which  of  two  competitors  shall  have  one,  the 
icision  of  both  tribunals  should  bo  governed  by  tho  rights  of 
to  parties.’  No  9110  will  suppose  that  tlioso  rights  are  modi- 
3d1  in  consequence  of  tlioir  boing  tried  by  ono  rather  tliiui 
10  other.'  Tlioy  depend  on  tlm  Inw,  which  is  the  same 
horever  it 'is' expounded.  A  different  rulo  would  not  be 
Icrntcd  in  any  civilized  community ;  a  rule  whioli  should 
ve  a  man  a  titlcwbcn  considered  in  ono  place,  which  would 
i  denied  him  if  considered  in  another,  making  liis  titlo  do- 
ind  not  on  any  uniform  principle  of  universal  prevalence, 
it  on  thoscono  wlioro  tho  investigation  of  it  was  conducted, 
Admit  such' a  jiractice,  and  tlio  result  would  follow  that -oh 
-some  =  occasions’  tho  Patent’  OfTieo  would  grant  monopolies 
wiiichtho  courts  would  hot  only  rofuso  to  enforco,  but  would 
declare  Void.  In  others  it  would  refuse'  n  pntont  to  'the  billy 
person' who  would  be  considered  intho  courts  to  bo  entitled 
*0  it;  Upon  on  interference,  for  ihstnnco,  it  would'dooido ;  in 
favor  of  an  applicant  who  find  made  a  drawing  boforo  his 
adversary,  although  the  lattor-  held  a  pntont,  and  had  p’orfeot- 


cd  it  nnd  engaged  in  tho  manufacture  bcforo  the  other  lmd 
taken  another  step  Yet  upon  a  suit  for  infringing  tho  pat¬ 
ent  obtained  by  such  an  applicant,  it  would  bo  condemned  ns 
invalid  without  hesitation.  If  in  n  similar  controversy  tho 
applicant  should  show  that  ho  reduced  the  invention  to  prac¬ 
tice  before  the  patentee  opiiosed  to  him,  he  would  bo  defeated, 
if  the  latter  was  the  first  to  innko  a  sketch  of  it,  or  oven  do' 
scribe  it  intelligibly.  Yot  m  mi  action-  by  the  latter  ho- 
would  be  told  on  the  same  state  or  facts,  that  ho  had  no  title 
to  tin*,  invention;  that  it  belonged  in  fact  to  his  adversary. 
It  is  only  because  such  views  as  these  are  widely  entertained  5 
and  insisted  on,  that  they  are  noticed  at  such  length  Yet  it 

nms-  0b,gir?ril!bya  Jo-g°  of  tho  Al’l,clllltc  Court,  Mkk- 
niCK  in  Widuraham.'  v.  Smijer,  that  “  it  would  bo  strange 

•  t  ,  „,7S!r"C  Ul°  h'V  “  requiring  ‘he  commissioner  to 
issue  a  patent  upon  a  state  ol  tho  case,  which,  when  next 
that  ,T:±“'rreilt  to  a  aoar,1  of  ]aw  °r  equity,  would  require  5 
that  court  to  pronounce  tho  patent  utterly  void."  In  con¬ 
formity  with  this  is  the  language  of  Touchy,  Alty.  Gen. :  « It 
“ ’impossible  that  an  executive  officer  should  regard  that  as  an 
objection  to  the  grant  of  a  patent  which  tho  courts  of  law  are 
bound  to  overrule  as  unavailable."  5  Op.  of  Atty.Gcn.  18 
It  can  hardly  be  necessary  to  add,  that  the  decisions  of  tho  : 
courts,  the  constituted  expositors  of  the  law-,  ought  to  bo 
balding  upon  tho  office,  and  to  over-ride  its  conclusions 
Beside  all  this,  they  are,  in  fact,  vested  with  direct  authority 
lo,r?Ycrfc  1,6  aet,on  where  they  have  refused  a  patent. 

,  ,  !,as.  "0,“°  to  ]*  recognised  of  late  in  tho  office,  nnd 

several  decisions  of  the  commissioner,  within  two  or  three 
years,  have  fo  lowed  the  decisions  of  the  eourLs  in  thoso  par¬ 
ticulars  in  which  they  were  once  disregarded.  Among  item 
C,«C7lI  tl,e  fiscs  fspuchewin  v.  Richardson,  Bornm. 
Dec.,  for  1870,  p.  81 ;  and  Gray  v.  I  Me,  Id.  for  1871,  p.  120 
l^down'C  f"'  “  autl,0iity'  ,U  b«  considered  safe  to 
S-in  following  as  rules  which  should  govern  the  prae- 

with  the  r^,,J^rSS8mC0  tl,^ar0  itt  U°“fori“ity  ; 
.’,1'  Wher.°  ,of  tjio  parties  to  an  interference  appears  to  : 
have  eonccived  the  idea  of  the  invention  before  the  others  I 
and  to  have  exercised  reasonable  diligence  in  ndnntimr  ami  - 
l!eld0entXflt|UUtil  l!°  reduocd  to  practice,  lie  must  bo  1 
anion  l  V  pai‘?Ilt  competitors.  Even  though  ‘ 

2"  has  reduced,  it. to  practice  .before  him,  or  has  obtained  1 1 
such*  claim!' npP  led  for  ono’  U  wiM  not  1,vail  him  against 
2.  -Whore  no  ono  can  maintain  such  a  claim,  tho  party  ?! 


who  first  reduced  tho  invention  to  actual  practice  must  bo  pro¬ 
nounced  the  prior  inventor,  although  his  competitor  lias  a  patent. 

8.  No  ono  can  bo  adjudged  to  lmvo  anticipated  a  patentee 
who  did  not  oitlier  rcduco  tho  invention  to  praotico  before 
linn,  or  conccivo  it  bcforo  him,  and  rcduco  it  to  praotico  with 
reasonable  diligence. 

Thus  far  wo  are  in  strict  ncoordnnco  with  tlio  law  of  tho 
land,  ns  expounded  by  its  authorized  tribunals.  In  wlint 
“’"Hows  wo  have  no  such  authority  to  guido  us,  but  must  bo 
yorned  by  principles  drawn  from  tho  adjudicated  cases 
:l  the  practico  of  the  offico.  ' 

1.  Where  there  has  been  no  reduction  of  tho  invention  to 
ctiial  practice,  and  noitlicr  party  has  a  patent,  it  would-secm 
s  if  judginont  ought  to  bo  given  in  favor  of  tho  ono  who 
irst  con  ccivcd  tho  iden,  and  labored  diligently  upon  it  until 
-io  had  so  far  matured  it  as  to  mako  a  satisfactory  application 
for  a  patent,  provided  this  antedates  tho  rival  application. 

It  would  be  more  accurate  pcrhnps  to  say  that  tho  ono  who 
carries  back  his  diligent  improvement  of  the  invention  to  tho  " 
earliest  period  should  prevail.  Tho  filing  of  an  application 
ought  to  bo  considered  a  constructive  reduction  to  practice, 
nnd  entitled  .to  so  much  weight  as  this.  1  u 

5.  Eor  tho  samo  reason  it  would  seem  that  tho  title  of  the  . 
first  applicant  should  yield  only  to  thoso  who  had  cither  m  fcW 0 
reduced  tho  invoution  to  practice  first,  or  conceived  it  first, 
and  been  industrious  in  elaborating  it. 

Both  of  those  rules  depond  for  tlioir  force  entirely  on  thoir 
boiug  in  accordance  with  tho  principles  of  tho  system  of  patent 
law.  They  derive  no  support  from  the  rulings  of  tho  courts, 
or  tho  practice  of  tho  offico.  A  patont  granted  in  contraven¬ 
tion  of  them  would  not  bo  condemned  probably  by  tlio  courts 
on  that  account.  They  are  suggested  for  tho  consideration  of 
tlio  offico,  and  it  dopends  entirely  upon- tho  commissioner 
whether  thoy  shall  be  adopted.  ; 

6..  Whore  neitlior  of  tho  parties  can  show  any  such  ground 
for  a  decision  in  his  favor  ns  has  boon  pointed  out,  ho  must 
prevail  who  first  produced  such  a  delineation  of  tlio  invention 
as  would  ennblo  an  expert  in  tho  art  .to  ombody.it  in  a  work¬ 
ing  machine,  or  an  oporativo  process.  It  is  sufficient  if  ho 
has  done  this  in  a  machine  capable  of  work  for  business  pur- 
!  poses,  in  n  working  model,  in  drawings,  or  evon,  as  it  has 
bcou  held,  in  an  oral  description.  ■ 

7.  In  the  absonoo  of  all  othor  grounds  upon  which  to 
determine  suoh  a  controversy,  it  must  bo  decided  upon  the 
presumption  that  tho  earliest  applicant  is  tho  first  inventor. 

:  S.  H.  Homes. 


■12 


REDUCING  AN  INVENTION  TO  PRACTICE. 


DEDUCING  A.N  INVENTION  TO  PRACTICE.  » 

■  There  is  one  stnge  in  the  history  of  nn  invention  to  which 
the  law  attache*  cs|iccinl  significance.  It  is  when  the  author 
tins,  ntndo  such  progress  in  porlhcting  it. as  to  acquire  a  right 
to  a  patent,  of  which  no  one  who  comes  after  him  can  dopriva 
him,  unless  he  forfeits  it  by  his  negligence.  He  has  not  only 
an  indefeasible  claim  to  tho  patent,  but  should  any  other  por- 
son  obtain  one,  it  will  bo  utterly  void.  AVhcn  lie  has  so  far 
completed  his  invention,  die  is.  commonly  snid  to  Imvo  ro- 
duoed  it  to i 'practice.  Hy  this  is  meant  something  more  than* 
a  mere  embodiment  of  it  in  a  visible  form.  What  is  implied 
•in  the  phrase  is,  however,  far.  from  being  well  settled.  A  care- 
•tut  study  of  the  judicial  decisions  -loaves -it  to  some  extent  in 
obscurity  and  doubt.  Thc-following  pages  will  lie  dovoted 
detcrmincTi't111011  °f  thQm'  0,<ler  to  600  how.far  they  .have" 

A  brief  examination  of  the -English  system  -will  die  of  nin- 
Tmll  w?  ■I"  Bl'a  ","a°r'flki'>g-  As  was  remarked  by 
Judge  Stout,  in  Pennock  v.  Dialogue,  2  Peters  1: :  “Many  of; 
the  provisions  of  our  Patent  Act  are  derived  from  the  prim  i 
ofP r?, P™0 VCC  i'»hl<f  'JrV°  l,revni,ed  the  construction  ! 
of  that  of  England.  i  he  construction  of  it  adopted  by 
the  English  courts,  and  tho  principles  and  practice  wliiefi 
have  long  regulated  the  grants  of  their  patents,  as  they  must 
have  been  known,  and  are  tacitly  referred  to  in  some  of  tlio 
jirQvisions  of  our  own  statute,  nllbrd  materials  to  illustrate 

By  the  stalutc.21  Jac.I.c.  83,  commonly  called  tho.Stntuto 
of  Monopolies  all  exclusive  privileges  of  the  character  thus 
sbrnfl  l  !01’  r,  h  ‘i0SB  l,l,eTly  oxisti"K-  those  which 
n  u  1  bo.f ' B™ord  .8raute<*,  'vero  abolished  and  declared 
•  uttLrly  void,  wUh  a  single  exception.  Patents  .for  invention 
were  saved  fi-om  the  operation  of  tho  act  under  .certain  re- 
strictions  embraced  in  the  oth  and  rttli  sections.  As  tho  lat¬ 
ter  embodies  the  only  conditions  upon  which  such  patents 
can  „ow  lie  sustained,  it  Ims  become  customary  to  spink  of 
tho  law  on  this  subject  as  if  ut  wore  founded  on  the  statute 

deHvnal,|‘tt'|e?l‘l!U"S“r  °Xp,;c88  <loclflrutio"  that  the  grants 
derive  all  their  force  from  tho  common  law.  Tho  elauso  in 

t  IiVda1  B0CtlOn,’  T  '  .00l,,ni“?  tl,e  restrictions  in  force  at 
eondemnatiou  pronounced  by -tho 
'le,t.“11  P*,.cnt8 horeaftor  to  bo  made  of  tho 

whtah  rate  nr,rk!"S  °f?ny  ,,n.au”or  of  now  manufactures 
which  othors  at  tho  tnno  of  making  such  letters  patent  and 


DEDUCING  AN  ■  INVENTION  TO.  PRACTICE.  18; 

shall  not  use."  It  is  to  this  single  clause  that  the 
Jritish  courts  have  been  accustomed  to  look  in  considering 
tho  novelty  of  litigated  inventions,  and  all  their  decisions  on 
that  point  havo  been  made  to  rest  upon  tho  interpretation'  of 

Two  conditions  are  evidently  proscribed  by  this  not,  and 
it  lias  always' been  hold  essential  that  tlioy  should  be  com¬ 
plied  with  in  order  to  rendor  ri  pntont  valid.  Olio  is  that  tho ; 
patentee  should  be  “  tlio  true  and  first  inventor"  of  what  was ; 
embraced  in  liis ’monopoly.  It  may  bo  observed  here  that  ns 
it  had  beoii  considered  boforo  tlio  passage  of  the  law,  that  tlio; 
importer  of  nn  invention  from  'abroad,  which  was  “  now  within  ' 
tlio  realm,”  might  havo  a  valid  patent  for  it,  although  he  ob¬ 
tained  it  from  othors;  so  it  was  decided  in  Myberry  v.  Ste¬ 
ven*,  AAT.  Pi  C.  86,  that  ho  was  included  within  tlio  saving 
provisions  of  the  statute,  nnd  this  ruling  is  still  authoritative. 
It  is  of  more  consequence  to  bear  in  mind  that  this  condition 
will  not  bo  held  to  have  been  broken,  although  others  linyo 
made  the  discovery  previous  to  the  patentee,  provided  he  did' 
riot  obtnin  his  knowledge  of  it  from  them,  and  they  have  not ' 

E’ui  it  in  use,  nor'  received  a  patent.  As  was  said  by  Lord  • 
YNPIIUBST,  in  llomehill  Co.  v.  Neilsoh,  AV:  P.,0.-  078:  “The- 
first  person  who  discloses  that  invention  to  the  public  is  the' 
first  inventor."  p..  719. 

The  other  requisite  to  a  valid  monopoly  is  that  “  others  did 
not  use”  the  invention  at _thc  time  of  its  being  granted.  By 
this  it  has  been  understood,  also,  that  tho  supposed  discovery 
has  not  already  como  to'  tlio  knowledge  of  tho  community. 
Tho  reason  assigned  for  this  is  that  the  patent  constitutes  a 
contract  between  tlio  patented  nnd  the  crown,  the  consider¬ 
ation  of  which  on  the  one  part  is  tho  exclusive'  privilege  con¬ 
ferred  on  the  grantee,  and,  on  the  otlior,  tlio  disclosure  of  a; 
new  art  or  mnnufnuturo  to  the  poople.  If. the  nrt  or  manu¬ 
facture  thus  disclosed  is  already  known,  and  n~*  - ' 

leged,  thoro  is  a  failure 'of  tlio  consideration  u| 


,Tv 


winch  thff 
oid,  ns 'all  / 


grant  was  made,  and  it ‘is:  therefore  held  to  bo  void,  as 'all ; 
royal  grants  arc  when  tho  representations  upon  which  thoy' 
were  obtained  provo  to  bo  unfounded.  If  tho  invention  has;; 
been  described  in  any'  published  work' before  tho  dnto  of  tho' 
patent, ’it  is  void.  This'willbotho  result,  also,  if  ithndbeon  : 
in  public  uso;  Tlio  law  to  this  otlcet  was  settled  boforo  tlio 
stat.  2i  Jac.'  I,  was  enacted;  and  1ms 'over1  since  been  recog- 
nixed!'  Tho  conditiou’has  been  incorporated  into  tho' patents 
which  contain  a  clause  rendering  thorn  void  if  what  is  em¬ 
braced  in  them  “is  not  a  now  invention1  ns  to  tho  public  uso 
and  exoroiso  thorcof.”  This  elauso  has  been  embodied  in  tho 


grant  because  it  expresses  nn  anciently  established  condition' 
upon  which  all  monopolies  dopciul.  No  |>orson  ever  inter- 
pointed  such  a  condition  into  a  royal  grant  without  authority. 

4  conjecture  lias  been  thrown  out  whether  it  would  not  be 
a  sufficient  objection  to  a  patent  to  show  that  a  machine  Klee 
that  embraced  m  it  had  ticca  constructed  and  exposed  to  ob- 
sorvation  before  it  wnsissued.  (W.  P.  C.  719, note.)  On  uoimr 
through  all  the  English  cases,  however,  not  one  can  bo  ioiind 
m  which  sucli  an  objection  has  boon  sustained  where  the  pro-  : 
viously-constructcd  apparatus  had  not  licon  omployed  in  ' 
actual  work.  The  nearest  approach  which  has  boon  made  to  ' 
a  discussion  of  the  subject  was  in  Lewie  v.  Jfa rimy  1  W  P 
C.  493.  It  tliorc  appeared  that  a  machino  operating  upon  tho 
samo  principle  as  the  plaintiff’s  had  been  brought  ovor  from 
America,  and  had  been  seen  by  tkreo  or  four  persons  boforo 
the  date  of  his  potent.  No  exceptions  were  taken  to  tho  evi-  ‘ 
denco  oil  tho  ground  that  it  had  been  kept  seorot,  thou-di  it 
was  smd  that  if  tho  plaintiff' had  scon  it,  or  obtained  a  know- 
loclgo  ot  the  invention  from  it,  it  would  linvo  licen  fatal  to  his  -> 
;  sult-.  But  Baron  Paiike  made  this  rcmnrk:  “Thero  is  no 
caso  m  which  n  patoiitce  Iiils  been  deprived  or  the  benefit  of  ! 
i  his  invention,  because  anothor  also  had  invented  it,  unless  lie 
had  also  brought  it  into  use."  In  tho  dearth  of  any  decision 
to  tho  contrary,  Baron  Pause's  remark  may  be  considered  ns 
embodying  the  English  law  on  this  point. " 

That  the  use  must  bo  iu  public  is  settled  beyond  nil  dis- 
pute.  It  was  resolved  ns  early  ns  170(1,  in  Oolluntl’e  Case 
ViP-  ,0'4,3;  AH.  B.  470;  finv.  Pat.  Oas.  172.  ft  Z,’ 
.shown  by  tho  dofenso  that  previous  to  tho  plaintiff’s  orici- 
inating  tho  optical  instrument  for  which  ho  lmd  his  patent  ' 
anothor  person  had  constructed  one  like  it,  and  had  used  it. 
But  it  was  lioldon  that  ns  Dr.  Hall  had  confined  it  to  his 
i  closet,  and  the  public  wore  not  acquainted  with  it,  Dollaud  was 
to  bo  considered  tho  first  inventor."  The  question  was  fully 
disoussed  also  in  Carpenter  v.  Smith,  AV.P.  G.  630;  5  M.nnd 
W.  800,  in  which  it  was  shown  that  a  lock  like  that  in  con¬ 
troversy  lmd  been  placed  upon  a  gate  in  a  public  way,  where 
kf  “vory  passenger.  Upon  n  hearing  boforo 
tto  M  bench,  tho  court  hold  that  this  was  such  a  use  in- 
E}8  must’debar  any  one  from  over  after  maintaining  a  ■ 
whSri^’V-  At  .tho  snmo  tnno  they  madojho  distinction 
whioli  has  nlwuys  boon  recognised,  that  there  should  bo  a  use 
in  public,  but  not  necessarily  a  uso  by  tho  public,  to  givo  it1 
such  an  effect.  The  law  established  in  tlioso  cases  has  novor 
been  assailed,  but  has  been  uniformly  adhered  to  in  every  ’ 

subsequent  disoussion  of  tho  subject.  '  • '  - 


tlio  utterances  of  tho  learned  j  udgo: who  presided  nrocorrcotly 
sot  forth  in  the  report,  lie  wns  evidently  somewhat  confused; 
ns  to  the  different  purposes  for  wliioh  such  n  prior  omdodiment 
might' bo  shown,  nnddid  not  distinguish  between  them.  Ills' 
remarks  are  hardly  entitled  to  any  great  weight  in  them-; 
selves,  therefore,  and  they  should  never  hnvc  been  cited  ns  an 
authority  on  this  subject,  after  the  emphatic  condemnation, 
pronounced  upon  his  rulings  by  all  the  judges  who  expressed!, 
their  opinions  before. the  House  of  Lords  inthocasoof  Ifouae] 
hill  Co.  v.  Neilson,  W.  1*.  C.  078.  The  following  extract!. 

.  from  that  of  Lord  BnouotlAM  sufficiently  exhibits  tlicir  senti-: 
ments:  “But  supiioso  it"  (the  previous  invention)  “  was  com-, 
pletc,  and  suppose  it  is  admitted  not  to  liavo been  a  trial,  then, 
it  is  one  of  the  greatest  errors  that  can  bo  commiltcd.in  point; 
of  law,  to  say  that  with  respect  to  such  an  invention  ns  that,: 
it  signifies  ono  rush  whether,  it  wns  completely  abandoned  or.j 
not,  or  whether  it  was  continued  to  bo  used  down  to  the  very,; 
date  of  tlio  patent.  Provided  it  was  invented  nnd.publicly! 

.  used  at  the  time,  twenty  or  thirtyycars  ago,  in  this  case  forty ; 
years  ago,  it  is  perfectly  immaterial— not  immaterial  to  tho ' 
second  question,,  the  second  condition,  namely,  whether  it. was 
used  or  not  at  the  time,  of  the  .  granting  of  tho  patent,  but  •  ; 
totally  immaterial  to  the  other  question,,  which  is  equally 
necessary  to  Ixs  ascertained  in  the  inventor's  favor,  wliothor 
or  not  ho  was  the  truo  and  first  inventor.”  p.  718.  Wo  learn 
from  this,  it  is  true,  that  where  it  is  attempted  to  bo  shown 
that  tho  invention  was  made  by  some  one  else  lieforotho  pat¬ 
entee,  and  was  embodied  in  a  working  apparatus,  proof;  that 
fcthe  use  of  it  was  continued,  or  hnd  boon  abandoned,,  may,  be-:. 

■  come  pertinent,  ns  showing  it  was  n. perfected;  discovery  on tho-;. 

,  one  hand,  ornn  unsuccessful  experiment  on  the  other.  We  learn 
just  ns  distinctly  that, independently' of  the  issuo  whetlior  the 
patentee  is  tho  first  inventor,,  and  whore,  there  is  no  question ; 
whetlior  such  previous  apparatus  was  perfect  or  not,  it  is  es-. 
sential  for  another  purpose  to  dutermino  whether  such  appa¬ 
ratus  was.or  wits  not  in  ;publio  use;  ;  that  it  is  indispensable 
that  it  should  have  boon  not  only  in  use,  but  in  publio.nso,,in'. 
order  to  make  itnvnilnblo.nsndofenso.  Andthoroisnotovonan 
intimation  in  Jones  v.  Pierce,  far  loss  in  HousehillCo.y.  Neil-- 
son,  that  tho  publicity  of  tho  uso  is  considered  to.liaye  any  , 
bearing  upon  tho  inquiry  whetlior  such  previous  apparatus, 
was  a, porfoot  and  completed  discovery.:  ..  , 

Whore  it  appears  that  a,  patentee,  has  raanufaoturedvbyi.a'. 
secret  process,  and  sold, tho  product. before  obtaining. liis  pat-.-, 
ont,.  that. will  bo  pronounced  n  uso  in  public.  .But, no, princi¬ 
ple  of  law  is  bettor  sottlcd  in  England  than  this,  that  in  ordor 


i  BEDUOINO  AH  INVENTION  TO  PBAOTIOE.  17 

to  nvoid  a  patont  on  tho  ground  that  tho  invontion  was  in  uso  . 
by  others,  when  it  was  granted,  it  must  appear  that  tlio  uso 
Was  in  public.  It  is  only  by  adhering  strictly  to  this  requiro- 
Snont  that  tho  public  have  an  assurance  that  they  shall  be¬ 
come  possessed  of  tho  knowledge  of  the  now  art,  and  bo  ron- 
‘dorcil  certain  of  sharing  tho  benefits  of  it. 


1m.«  courts,  on  which  wo  must  chiofiy  roly,  cannot  always  bo 
neiled.  Ono  principle  may  bo  considered  ns  tolorably 
sottlcd,  although  in  conflict  with  sentiments  which  have  ■ 
an  extensive  prevalence,  'l’hnt  principle  may  bo  thus 

In  order  to  constitute  a  reduction  to  practice,  tho  invon- 
must  linvo  been  embodied  in  a  working  machine,  enpa- 
jf  being,  used  for  business  purposes,  or  if  not  capable  of 
,  in  something  equivalent. 

L’liis  wns  most  emphatically  asserted  by  Judge  Simiague, 
Howe  v.  Underwood,  1  Kish.  100,  in  which  ho  hold 
lnngungo:  “This  is  important  to  bo  understood,  bo- 
e  the  iden  has  been  carried  all  along,  that  if  a  prior  in- 
tor  lias  gone  to  n  certain  extent,  although  ho  fall  short  of 
ting  a  complete  machine,  practically  useful,  those  who 
e  after  have  no  right  to  secure  to  themselves  tho  advan¬ 
ce  tho  invention.  This  is  not  law.”  p.  108.  Tlio  quos 
whetlior  the  previous  invention  wns  an  abandoned  ex- 
I  penment  was  also  raised  in  that  case,  but  the  passage  hero 
quoted  was  announced  ns  a  maxim  entirely  independent  of 
I  that  consideration.  Tho  snmo  learned  judge  had  previously 

I  expressed  his  opinion,  in  Many  v.  Sizer,  I  Fish.  17,in  this 
mnrinor:  “Now  experiment  alone  is  not  sufiicicntio  consti¬ 
tute  priority  of  invention.  The  nrticlo  must  be  completed 
for  public  uso,  and  tho  result  must  bo  known,  although  it  is 
not  necessary  that  it  should  be  actually  used  bv  tlio'piiblic." 
p.  20.  He  evidently  has  in  mind,  in  this  last  clnuso,  tho  dis- 
tinotion  constantly  observed  between  a  uso  in  public,  and, 

|  what  has  always  been  regarded  ns ‘unimportant,  a  use  by  the 
public.  To  tlio  same  cflcct  as  those  two  decisions  aro  the  ob¬ 
servations  of  Judgo  Cmi'FOKU,  in  beymour  v.  Osborne,  11 
AVnll.  610 :  “Ho  is  tho  first  inventor  in  tho  sonso  of  tho  patont 
law,  and  untitled  to  a  patent  for  liis  invontion,  who  first  per¬ 
fected  and  adapted  the  snmo, to  use;  and  it  is  well  settled 
that,  until  the  invontion  is  so  perfected  and  adapted  to  use,  it 
is  not  patentnblo  undor  tho  patent  law."  p.  652.  In  Pitts  v. 
Wangle,  2  Fish.  10,  also  it  was  said  by  DitUMMONi),  J.  of  the 


for  tho  purposos  contemplated,  but  it  must  have  beon  capable 
of  such  uso."  p.  15.  And  in  tbo  Union  Sugar  Refinery  v.  ■ 
MaUheson,  2  Fish.  000,  it  was  bold  tlmt  tbo  prior  invontion , 
must  linvo,  been  11  reduced  to  pructieo  in  tho  form  of  an  I 
oporntivo  machine.” 

It  cannot  be  necessary-  to  refer  to  any  othor  casos  on.  tli 
point,  since  tho  law  thus  dofmed  lias  novor  been  question! 


structcd  on  tho  samo  prinoiplo  as. that  described  in  tho  plain¬ 
tiff's  patent  had  been  made  and  put  in  operation  several  years 
before  ho  originated  it.  It  had  been  worked  by  hand  only, 
and  proving  not  to  bo  profitable,  wns  rolinquishod.  The 
plaintiff  ’s. machine  wns  open,  to  the  samo  objection, and  it  wai 
successful  only  because  it  was  operated:  by  power.  It  was 
urged  on  his  part  that  tho  former  mnohino  was  only  export 
mental.  While-,  this  was  admitted  by  Judge  Washington, 
who  presided  at  tho  trial,  ho  held,  nevertheless,  that  it  wns 
sufficient  to,  destroy  tho  plaintiff’s  claim  as  an  inventor.  Ifc 
is  ovidont.tlmt  tho  mncluno  wns  experimental,  nftor  nil,  on’  - 
in  a  secondary  sense,  and  in  a  finnneinl  view..  As  a  mnclii 
it  was  perfect,  and  capable  of  uso  for  business,  and  comes 
within  tho  rulo  which  has  beon  advanced.  Tho  case  of  Grey 
v.  James ,  1  Pot.  C.C.  8!)4  and  470,  may  be  thought  to  resem¬ 
ble  that  of  Walam  v.  Bladen,  but  it  is  cnunlly  in  accordance 
with  tho  principle.  It  may  bo. safely  laid  down,  therefore,  ns 
the  doctrmo  of  tho  law,  than  nil  invention  can  bo  said  to  bo 
reduced  to  practice:  only  when  it  lias  been  embodied,  if- 
susccptiblo  of  it,  in  a  mnohino  capable  of  being  used  forprnc.: 
tical  purposes,  as  distinguished  from  one  thnt  is  merely  ex¬ 
perimental.  If  not  suscoptiblo  of  boing  so  embodied,  soino 
step  equivalent  to  that  must  have  beeu  taken  with  it. 

II.  It  is  more  difficult  torcconuilc  what  has  been  held  by  dif¬ 
ferent  courts  ns  to  tho  necessity  of  an  invention  hnving  beon 
reduced  to  actual  prnotico.  Thnt  it  must  lmvo  beon  so  reduced 
under  some  circumstances,  thoro  can  bo  no  doubt.  From 
tlib  dicta  uttered  in  tho  cases  of  Seymour  v.  Oslome,  and  Pitts 
v.  Wemple,  oiled  nbovo,  and  Woodman  v.  Stimpsori,  1  Pislier 
J)8,  it. would  scorn,  howovor,.thnt  there  may  bo  eases  in  which  - 
it  would  bo  found  suflieiont  to  embody  tho  supposed  inven¬ 
tion  in  an  apparatus  socomploto  thnt  it  would  bo- employed 
for  business  purposes  to  accomplish  tho  work  intonded.  In  j 
addition-to  these,  tho  languago  of  Judgo  Stoiiy,  in  Washburn 
v.  Gould,  8  Story  122,  may  bo  adduced.  “  At  any  rnto  ho  is.; 
tho  invontor  who  is  entitled  to  a  patent,  who  first  brought ; 
tho  maobino  to  perfection,  and  made  it  capnblo  of  useful 1 


s  inny  bo  employed  which  scorn  to  reeoghizo  tho  mor 
rporntion  of  an  idea  into  n  material,  oporntivo  form,  a 
ciont  without  its  being  tosted  in  work,  at  tho  very  tim 
n  no  intention:  of  dispensing  with  thnt  requisite  is  cntci 
xl..  It  is  evident  thnt  no  expressions  like  thoso  cite 
ra,  which  wore  made  without  roferonco  to  tho  questior 
del-  bo  relied  on  to  sustain  the  doctrine  undor  discussior 
in,  in  Ransom  v.  Mayor,  1  Fish.  252,  these  remarks  nr 
buted  to  Judge:  Hall:  “  The  party  who  embodies  tli 
oiplo,  and  makes  it  available  for  practical  use,  is  tin 
y  who  is  ontitlcd  to  a  patent,  and  to  protection  under  tin 
nt  law.”  p.  270.  It  may  bo  doubted  whether  he  iutondet 
this  to  nogntivo  tho  idon  that  it  wns  nuccssnry  thnt  tin 
odiment  should  lmvo  been  put  in  practice,  since  nothin; 
le  case  called  for  such  an  expression.  In  Parkhursl  v 
<mun,  l  Blntulif.  488,  Judgo  Nelson's  languago  wns  this 
constitute  a  prior  invention  tho  party  alleged  to  linvc 
uccd  it  must  linvo  proceeded  so  far  ns  to  reduco  his'iden 
raotico,  and  embodied  it  in  somo  distinct  form.  It 
t  linvo  boon  carried  into  practical  operation,  for  ho  is  en 
1  to  a  patent,  who,  boing  nil  original  inventor,  lias  first 
ioted  the  invention,  and  ndnptcd  it  to  practical  uso."  p, 
( Vide  Post  80).  In  Agawam  Woolen  Co.  v.  Jordan,  7 
I.  688;we  have  tho  viows  of  the  highest  tribunal  ns  eon- 
diby  Clifford,  J.:-  “Ho  is  tlio  inventor,- and’ is  entitled 
patent,  who  first  brought  tlio  machine  to  porfeotion,  nnd 
i  it  capnblo  of  useful  operation."  p.  802.  Wo  lmvo  them 
in  words  alxiut  tho  samo,  of  Nelson,  J.,  in  Whileli/  v. 
•jne.  Id.  685 :  “  For  ho  is  the  first  inventor,  and  entitled 
™  ..  patent,  who,  boing  an  original. discovoror,  has  first  per¬ 
fected  and-  adapted  tlio  invontion  to  notun]  uso.”  p.  087, 
These  grave  declarations  coming  from  such  high  authorities, 
dosorvo  sorious  consideration ;  and  if  wo  could  only  bonssur 
cd  tlint  they  wcro  uttcrcd  with  roferonco  to  tho  prinoiplo  of 
law  under  disoussion,  they  would-  inoreaso  tho  difficulty  of 
ascertaining  wlmt  is  tho  true  doctrine.  But  it  is  by  no 


REDUCING  AN  INVENTION  TO  PRACTICE. 


is  Coffin  v.  Oi/ilen,  S  Fish.  040,  which  1ms 
tod  as  determining  that  it  is  not  necessary 
,’ico  lues  bcon  in  use  in  order  to  dofeat  a 
Lined  hy  another  afterward,  Tho  learned 


live  done  work,  or  been  capable  of. 
been  more  experiments,  afterward 
y  were  in  faet  operated  for  a  greater 
iportance,  except  so  far  as  that  inny 
re  that  they  were  or  wero  not  moro 
v  the  fact  is  of  consequents).  But 
icy  were  inaeliinus  capable  of  doing 
e  same  arrangements  ns  the  plain- 
liincs,  then  tho  fact  that  tlioy  were 
,  and  then  abandoned  for  othor  rca 


put  into  a  mill.  Tho  presiding  judge  charged  the  jury  that 
they  might,  find  that  llio  patented  wheel  was  wanting  in  no¬ 
velty  without  evidence  that  tho  other  had  been  actually  used. 
The  report  is  unusually  brier,  and  the  reasons  upon  which 
these  instructions  wore  founded,  nrc  not  hinted  at.  The  pa¬ 
tent  was  dated  in  182!),  tho  trial  took  plnee  in  1849 ;  yot  no¬ 
thing  is  said  on  tho  subject  of  the  abandonment  of  the  old 
whcol,  although  thcro  must  havo  been  a  strong  presumption 
to  thnt  effect  from  tho  lapso  of  time.  Tho  case  stands  in 
striking  contrast  with  thnt  of  Parker  v.  ffulmc,  hereafter 
cited,  p.  28,  which  was  brought  upon  the  samo  patent,  and 
when  wo  compare  with  it  the  marked  caution  with  which 
tho  evidence  of  a  previous  construction  was  thoro  rccoiycd, 
wo  cannot  resist  the  conjecture  that  tho  report  in  Parker  v. 
Fenjumn,  is  very  imperfect,  and  great  hesitation  must  bo 
felt  in  relying  upon  it.  This  doubt  will  bo  increased  when 
tho  ruling  of  the  samo  learned  jurist,  in  Foote  v.  SiUktj,  1 
Blatehf.  440,  is  read. 


mee3.  These,  ho  said,  “  must  bo  regarded  substai 
uso  of  tho  reversing  mechanism.”  Soino  hesitat 
i  felt  as  to  tho  soundness  of  this  conclusion;  tho 
is  clear,  can  hardly  be  oited  ns  an  authority  ag 
tiring  proof  of  use  in  such  cases. 

It  must  bo  conceded,  nevertheless,  that  tho  langua 
trued  judge  lends  countenance  to  tho  idea  thnt  the 
rlinps  tlio  only  object  of  insisting  that  it  should  1 
nt  what  is  alleged  to  have  anticipated  tho  patent 
vention  was  employed  in  work,  is  to  establish  til 
complete  and  practical  embodiment,  of  it.  If  that 
Hows  thnt  other  proof  of  its  completeness  may  1 
ted.  Now,  there  is  no  question  but  that  proof 
iploymcnt  has  been  treated  as  material  in  this  co 
jllns  in  England,  when  the  question  has  been  raised 


limed  thnt  tho  invention  had  been  innilo  bv  somo  ono  else 
foro  tho  patentee,  ho  has  been  called  upon,  ns  an  indispensn- 
o  condition,  to  show  that  it  had  been  put  in  uso ;  and  this 
s  boon  insisted  upon  without  any  reference  to  tho  com- 
otencss  or  imporfcction  of  tho  formor  embodiment  or  it, 
d  oven  wlioro  no  such  question  was  raised.  The  proof  has 
beon  held  essential  on  an  ontiroly  distinct  ground  ;  bocausoit 
is  prescribed  by  tho  stntuto.  And  it  is  so  proscribed  for  tho 
samo  reason  that  it  was  in  tho  English  system,  in  ordor  thnt 
tho  knowledge  of  it  by  tho  public  might  bo  insured. 

In  Wabon  v.  Station,  4  Wash.  580,  it  was  tho  very  question 
mndoby  tho  plaintiff  ’s  eounsol  thnt  tho  mnohino,  which' the 


REDUCING  AN  INVENTION  1 


TO  PRACTICE. . 

patented,  lmd  nevor  been  in  use.  And  the  court  admitted  the 
principle,  hut  held  tlmt  the  evidence  was  not  sufficient  to  sus¬ 
tain  tho  plea,  'i'hc  objection  had  also  licon  tuken  tlmt  the 
prior  machine  was  imperfect,  nml  it  was  answered  upon 
grounds  entirely  distinct  from  that  of  its  completeness  having, 
been  demonstrated  by  its  successful  operation.  Tho  necessity 
of  its  being  shown  to  linvo  been  worked  was  founded  alto¬ 
gether  on  tlie  language  of  tho  statute.  Judge  Washington,-, 
when  taking  up  the  question,  says:  “But  the  point  mainly; 
relied  upon  by  the  plaintiff's  counsel  :is  that  no  evidcuco  wtisr 
given  that  Christian’s  machine  was  ever  .used  within  the  true  | 
meunin <j  of  that  expression  in  the  patent  law.”  p.  588.  Tlicro  j 
is  not  the  slightest  indication  that  such  evidence  was  called;  j 
for  in  order  to  repel  the  charge  that  the  machine  wits  not  I 
practically  successful.  Tho  views  of  Judge  Story  on  this 
question  may  be  gathered  from  this  language  or  his  in  Bed¬ 
ford,  v.  lfu.nt,  X  Mason  802.  “Every  subsequent  patentee,  al¬ 
though  nil  original  inventor,  may  be  defeated  of  his  patent 
right  upon  proof  of  his  prior  invention  being  put  in  use.”  ,p. 
804.  The  intent  of  the  statute  was  to  guard  against  defeating  ; 
patents  by  sotting  up  a  prior  invention  which  Twd  never  been  ■ 
reduced  to  practice  (p.  805);  not,  it  scorns,  to  repel  tho  pro-  i 
i  sumption  of  imperfection  arising  from  its  abandonment. 

I  And  also  from  what  fell  from  bis  lips  in  Ileed  v.  Cutler,  1  Story 
j  500:  “  Under  our  patent  law,  no  person  who  is  not  the  first, 

1  ns  well  as  the  original  inventor,  by  whom  tho  invention  lias 
'  been  perfected,  and  put  in  actual  use,  is  entitled  to  a  patent." 

p.  50(1.  While  it  is  true  that  in  both  those  euscs  the  earlier 
:  embodiments  of  tho  invention  wero  charged  with  not  being 
|  effective,  tho  fact  tlmt  they  lmd  been  in  operation  was  not 
(  once  alluded  to  ns  a  rofutntiou  of  tho  chnrge.  Other  means 
woro  taken  to  show  that  they  wore  capable  of  accomplishing 
their  proposed  functions.  Tlmt  they  lmd  not  been  in  uso  was 
taken  up  as  nn  independent  objection  to  their  being  intor-  ; 
posed  ns  a  bar  to  tho  plaintiff's  patout.  It  was  treated  not 
only  os  an  independent,  but  as  in  itself  a  sufficient  answer  to  ' 
tho  dofoiiso.  It  was  mot  in  tine,  not  by  proof  that  the  .ma¬ 
chines  wore  practical  and  effective,  but  by  proof  that  they  ■ 
lmd  been  actually  employed  in  business,  as  tho  only  way  of  > 
satisfying  tho  court  tlmt  tho  inventions  woro  not  now-  when  j 
pntontod  ns  required  by  tho  stntuto. 

In  Parker  v.  JTulme,  1  Fish.  44,  again,  nn  attempt  was 
mndo  to  show  that  a  wheel  similar  to  that  for  which  tho 
plaintiff  .hold  a  patent  had  boon  made  .lieforo  the  patentee 
originated  it.  •  Inspecting  this,  the  presiding  Judge,  Kane,  ■  ■■ 

Sivo  tlioso  instructions  to  the  jury:  “Oue  portion  of  Mr.  . ; 
ulmos'  testimony  callsfor  this  remark,  that  it  is  uoteuough 


28  REDUCING  AN  INVENTION  TO  PRACTICE. 

tlio  public.  Tlio  earliest  enso  in  which  tho  subject  enmo  dtf 
tinctly  under  judicial  consideration  is  Bedford  v.  Hunt,  1  Mas.  I 
802,  decided  in  1817,  nnd  id  ready  citod.  It  was  slion'n  dial ! 
tlio  article  monopolized  by  llie  plaintiff  lmd  lwcn  mnniifms*  i 
tured  many  years  before  lie  originated  it.  Tlio  principal 
question  on.  the  trial  was  ns  to  the  extent  to  which  it  in 
have  beon  used  in  ordor  to  render  the  patent  void.  Jin 
Story  answored  the  question  thus:  "But  if  the  first  inven 
reduced  bis  theory  to  iiraotice,  and  put  his  machine  or  other  i 
invention  into  usu,  the  law  ncvorcoiild  intend  that  the  greater ! 
or  less  use,  in  which  it  might  be,  or  the  more  or  less  widely 
the  knowledge  or  its  existence  might  circulate,  should  con¬ 
stitute  the  criterion  by  which  to  decide  upon  the  validity  of 
any  subsequent  patent  Tor  the  same  invention.”  p.  805.  This 
decision  was  founded  upon  the  statute  of  1708;  but  after  the 
passage  of  that  of  1830,  ho  held  the  same  doctrine  even  more 
unequivocally  in  Heal  v.  Gutter,  Story  5U0,  declaring  himself 
in  these  terms:  “If  the  invention  is  perfected  and  put  into 
actual  use  by  tlio  first  and  original  inventor,  it  is  or  no  con¬ 
sequence  whether  the  invention  is  extensively  known  or  usud,- 
or  whether  the  knowledge  or  use  thereof  is  limited- to  a  few 


her  the  invention  is  extensively  known  or  used, 
i  knowledge  or  use  thereof  is  limited- to  n  few 
n  to  the  first  inventor  himself."  p.  500.  And 
with  this  lie  took  occasion  to  pronounce  Dal- 
n  “just  exposition  of  the  patent  law  of  this 
rer  correctly  it  may  have  been  decided  under 


luml's  case  not  n  “just  exposition  of  the  patent  law  of  this 
country  however  correctly  it  may  have  been  decided  under 
that  ol  England,  p.  508. 

Whatever  disposition  to  treat  these  decisions  ns  obso¬ 
lete  may  be  lelt,  they  havebceu  clearly  recognized,  nnd  their 
authority  acknowledged  in  cases  of  too  late  a  period  and  of 
too  high  a  character  to  allow  of  their  lining  disregarded.  In 
Oayler  v.  Wilder,  10  How  -177,  decided  in  1850,  the  subjoct 
must  have  been  under  consideration  in  the  Supremo  Court  of 
the  United  States.  In  determining  the  case  scvoral  points 
wore  noticed,  which,  after  all,  cannot  be  esteemed  very  siir- 
uifiennt;  such  as  that  the  producer  or  the  safe,  which  it  was  '- 
alleged  was  made  before  that  of  the  patentees,  nover  -W»m» 
awnro  of  tho  value  of  his  invention ;  that  its  construction ' 
was  unknown  to  others,  though,  as  was  remnrkcd,  tho  me- 
j-l,?.nl<?  -.°  mn“°  14  mufit  *mvo  been  cognizant  of  it.  It  is 

dillicult  to  see  that  much  importance  could  ho  attached  to  ' 
these  and  othor  incidents  commented  upon.  Whon  tho  very  ■ 
able  jurist  who  pronounced  tlio  judgment  of  tho  court,  Chief  i 
Justice  i.  ANE  V,  came  to  dismiss  tlio  import  of  the  expression  in  ! 
■the  sixth  section  of  t bo-law  of  183(1,  “  not  known  or  used  by 
others  before  his  or  their  invention  or  discovory,"  ho  founded 
his  in  orpretatmn  of  it  upon  tho  clause  in  tho  fifteenth  section.  1 
in  which  it  is  provtdod  that  a  patent  should  not  bo  hold  void  1 


i  account  of  tho  inventions  being  known  or  used  nbroad,  i 
10  patentee  woro  not  awnro  of  it.  IJo  inferred  from  this  tin 
entitle  himself  to  a  patent ,'  an  originnl  discovorcr  of  an  in 
•ovomont  nceil  not  bo  in  a  strict  sonso  tlio  first  invonto 
lice  his  title  could  uolbc.impcnchcd  although  tho  imjirov 
out  hud  been  made  by  others  before  him.  lie  snid,  thor 
re,  that  “  the  clause  in  question  "  (that  oontainod  in  tl 
Icont-h  section)  “qualifies  tho  words  lioforo  used"  (tlios 
lotcd  from  tho  sixth), “and  shows  that  by  knowledge  an 
o  tho  Lcgislutnrcmcunt  knowledge  and  use  existing  in 
tinner  accessible  to  the  public.”  p.  -157.  Now,  if  the  judj 
mt  of  tlio  court  had  boon  made  to  turn  on  this  intorprotc 
in,  and  the  Connor  safe  had  been  pronounced  no  bar  to  th 
tent  in  suit,  on  tlie  ground  that  it  was  not  accessible  to  th 
blic,  it  would  liavo  bjou  a  rovorsal  of  tho  doctrine  nil 
need  in  Halfuni  v.  Hunt  and  11 ml  v.  Cutter.  And  if  Ilia 
etrino  was  , not  approved  by  the  court  thoro  could  have  beoi 
fuiror  opportunity  to  have  set  tho  profession  right  in  l  oin 
a -to  it.  But  apart  from  tlio  quotation  givou  abovo  tlior 
not  the  slightest  allusion  to  it.  yOn  tho  contrary  tho  dcci 
u  assumes  that  tho  Connor  safe  was  prima  facia  fatal  ti 
linlifi  ’s  title;  but  assorts  that  it  had  ceased  to  liavo  Ilia 
jet  because  tlio  jury  must  bo  presumed  to  have  found  tha 
ind  been  forgotten,  and  buried  in  oblivion,  like  a 
lie  learned  judgo  even  holds  this  romarkablo  language 
rningit:  “  Wo  do  not  understand  the  Circuit  Court  to 
id  that  tho  omission  of  Connor  to  try  the  valuo  of  his  saf 
-  proper  tests  would  deprive  it  of  its  priority  ;  •mrltisomissm 
briny  it  into  public  use.  Ho  might  hnvo  omitted  both,  am 
to  abandoned  its  uso,  nnd  liccn  ignorant  of  tlio  extent  of  it< 
luo;  yot  if  it  was  tlio  sumo  as  Fitzgerald's,  tho  lattor  conic 
t,  upon  such  grounds,  bo  entitled  to  n  patont;  providod 
jnnor’s  safe,  and  its  modoof  construction,  woro  still  in  the 
rnnory  of  Connor  before  tlioy  woro  recalled  by  Fits- 
raid’s  patont.”  p.  498.  In  otlior  words,  Connor’s  safe  was 
bar  to  a  |>atont  for  tho  samo  improvomont  to  any  subsequent 
ontor  of  it,  so  long  ns  Connor  romoinbored  its  construe- 
in,  notwithstanding  it  hnd  novor  been  in  public  uso.  Com 
loring  Hint  the  decision  turned  on  tlio  knowledge  of  Connor’s 
fo  having  been  lost,  nnd  not  on  its  having  been  kept  secret, 
is  vory  manifest  that  tho  court  folt  tlio  weight  of  Judge 
'onv’s  decisions,  and  it  was  to  avoid  tlio  oflbet  of  thorn  that 
oy  resorted  to  tlio ,  oxpediont  of  treating  Conuor’s  .  snfo  as 
ving  been  forgotten. 

In  Hick  v.  Lippincott,  2  Fish.  1,  whioh  wns  tried  two  or 
reo  years  allot-  Oayler  v.  Wilder,  the  validity  of  the  patont 


REDUCING  AN  INVENTION  TO  WUCTICB. 


REDUCING  AN  INVENTION  TO  PRACTICE. 


In  liia  instructions  to  tlio  jury  ho  emphatically  ro-ossorlcd 
the  doctrine  advanced  in -lialford  v.  limit  and  Heal  v.  Cutler, 
going  so  far  as  to  adopt  tlio  very  language  quoted  above  from 
the  former  report.  There  can  be  little  doubt,  therefore,  that 
the  law  of  those  eases  was  in  the  minds  of  the  court  when 
they  had  that  of  Qayler  v.  Wilder  under  consideration.  The 
same  question  must  have  arisen  also  in  Caltoon  v.  Ring,  1 
Fish.  397,  and  1  ClilK  592,  which  was  tried  before  Judge 
Cl.U'FOltl)  iii  1859,  and  at.  subsequent  times.  It  was  shown 
by  the  defendant  that  before  the  plaintilV  made  his  invention, 
one  Luce  had  constructed  a  perfect  machine  embodying  it. 
It  would  seem  that  it  was  kept  secret;  but  it  is  ovident  that: 
this  was  not  deemed  sufficient  to  prevent  its  operating  fatally 
against  the  suit.  The  court,  therefore,  adopted  n  course  simi¬ 
lar  to  that  pursued  in  Qayler  v.  Wilder,  and  charged  the  jury 
that,  whether  it  had  been  used  or  not,  if  it  hnd  lieen  broken 
up,  and  its  materials  used  for  other  purposes,  or  lost  (of  nil 
which  thcro  was  proof),  and  its  construction  was  only  re¬ 
called  to  tlio  memory  of  the  maker  by  the  present  contro¬ 
versy,  etc.,  its  existence  would  not  in  validate  Cahoou’s  pntent. 
(p.  411).  Tlio  learned  judge  must  therefore  have  regarded: 
the  secret  existence  of  the  machine  ns  in  itself  a  bar  to  a 
patent  obtained  by  any  subsequent  inventor,  unless  that  ob¬ 
jection  were  removed  in  the  way  ho  pointed  out.  Again  in 
Unit  v.  Bird,  .3  Fish.  595,  tried  before  Judge  lit.ATGIIKOItli  in 
1887,  tlio  prior  machine,  upon  which  the  defendant  relied, 
had  always  been  kept  carefully  secluded  from  observation. 
Yet  this  was  manifestly  considered  as  not  a  sufficient  answer 
to  it.  Instead  of  pronouncing  against  it  on  the  ground  that 
it  had  never  been  in  public  use,  the  court  laid  hold  of  eir-f 
cum.staneus  from  which  they  condemned  it  ns  an  abandoned 
experiment.  And  they  eito  at  length  tlio  ease  of  Qayler  v. 
Wihler  ns  analogous  to  the  ono  before  them,  and  ns  sustaining 
their  decision. 

Judgo  Story's  doctrine  has  also  been  supposed  to  have; 
boon  directly  affirmed  in  Coffin  v.  Ogden ,  3  Fish.  (140;  but: 
this  is  not  homo  out  by  a  ‘careful  examination  of  the  report' 
It  was  ruled  by  the  court  that  an  exhibition  of  the  alleged, 
previous  invention  to  two  or  tlireo  persons  was  equivalent  to- 
giving  the  knowledge  of  it  to  the  public.  Tlio  necessity  of- 
a  publiu  uso  of  it  was  distinctly  rceognisod,  therefore,  al¬ 
though  the  evidoneo  by  which  it  was  held  to  have  been  made 
out,  might  not  generally  bo  hold  sufficient. 

If  tlio  dootrino  has  never  boon  assorted  anew  in  any  of  our 
courts  in  express  terms  since  tlio  enso  of  Reed  v.  Cutler,  it; 
lias  nqvor,on  tlio  other  hand,  been  condomucd  in  any  instance  ■ 
in  wluok  it  was  tlio  propor  subjoot  of  adjudication.  And  an; 


elementary  writer  of  high  authority  evidently  entortnins  an 
opinion  in  conformity  to  it.  In  the  3d  edition  of  Curtis  on 
Patents  may  bo  found  this  sentence:  “If  tliu  tiling  patented 
has  once  lieen  actually  mid  completely  invented  or  discovered 
before,  however  limited  the  use,  tlio  patent  is  in  validated,”  etc., 
Sec.  87.  Again,  when  speaking  of  some  English  decisions, 
it  is  said:  “If  wo  examine  the  facts  of  tjio  several  cases,  and 
the  tests  applied  to  them,  tnkiugenro  to  remember  that  under 
our  lnw  on  tlio  question  of  novelty,  the  publicity  of  the  prior 
use  is  not  otherwise  imjwrtant  than  as  a  circumstance  tending 
to  show  that  there  was  or  was  not  a  completed  invention,” 
etc.  See.  88.  -lie  lias  nowhere  declared  his  opinion  more  ex¬ 
plicitly,  it  is  true;  but  what  his  views  are  is  evident  enough. 

_  While  this  matter  lias  not  been  made  the  subject  of  any 
distinct  adjudication  of  late,  there  have  been  several  occasions 
in  which  remarks  have  fallen  from  the  bench,  plainly  indi¬ 
cating  that  a  different  view  of  the  law  was  entertained.  The 
first  extract,  which  was  given  from  tlio  opinion  of  Judgo 
Taney  in  Guyler  v.  Wilder  (Ante  27)  shows  that  such 
wero  his  impressions,  although  he  avoided  a  conflict  with  the 
authority  of  those  cases.  In  Jlasehlen  v.  Ogden,  8  Fish.  378, 
Judge  Sherman  in  n  brief  summary  of  the  law  upon  tlio 
subject  included  this  principle:  “The  prior  use  of  an  invention 
must  lie  a  publiu  uso  and  not  a  private  use.  If  an  invention 
is  made  and  used  in  n  private  way,  and  then  thrown  aside, 
and  not  given  to  the  public,  a  patent  granted  to  a  subsequent 
inventor  would  bo  a  valid  patent.”  p.  380.  Ill  Adams  v.  Ed¬ 
wards,  1  Fish.  1,  Judge  Woourury,  after  commenting  upon 
the  cftcct  of  using  an  invention  two  years,  leaves  that  subject 
and  pirocccds  thus:  “If  a  man  has  an  invention,  and  nobody 
knows  of  it,  then  the  uso  of  it  cannot  debar  another  porson 
from  inventing  or  patenting  it."  p.  12.  • 

Tlio  expression  of  tlicso  opinions  so  widely  diflering  from 
tlioso  of  Judge  Stoiiy,  justify  an  inquiry  into  tlio  grounds  on 
which  his  wore  founded.  Tub  only  reason  lie  gives  for  them 
is  to  bo  found  in  that  clniiso  of  the  lnw  which,  as  lie  snys, 
“expressly,  declares  that  the  applicant  for  a  pntont  must  be 
the  first  as  well  as  an  original  inventor.”  In  support  of  this 
he  quotes  from  his  own  opinion  in  Pcnnoeh  v.  Dialogue,  2 
Pet.  1,  wliero  ho  said  tho  Patent  Act  “  gives  tlio  right  to  the 
first  and  truo  inventor,  and  to  him  only  ;  if  known  or  used 
boforo  his  supposed  discovery,  ho  is  not  tho  first,  although  ho 
may  bo  tho  true  inventor,  and  that  is  tho  caso  to  which  tho 
clnuso  looks,”  p.  28.  Now  it  is'  a  little  remarknblo  that  tho 
very  snmo  expression  is  used  in  tlio  English  Statuto  of 
Monopolies,  wliioh  restriots  tho  grant  of  a  patent  “  to  tlio 
trno  and  first  invontor."  Our  statute  rends,  “the  original 


and  first  inventor;"  but  the  learned  judge  lays  no  stress  on' 
the  word  original ;  in  filet,  lie  uses  it  as  interchangeable  with 
the  word  true  in  the  last  extract.  It  is  the  more  remarkable 
because  it  was  in  this  very  case  of  Pcnnock  v.  Dialogue  that 
ho  explained  how  greatly  wo  were  dependent  upon  the  con.:: 
struetion  of  the  linglish  law  for  the  proper  interpretation  of 
our  own  ns  mentioned  on  a  fortnor  page.  (12.)  lie  said: 
further  on  that  occasion,  “The  words  of  our  stntutc  are  not 
identical  with  those  of  the  statute  of  Jntncs,  but  it  can  scarcely’ 
admit  of  a  doubt  that  they  must  ltnvo  been  within  the  con¬ 
templation  of  thoso  by  whom  it  was  framed,  ns  well  as  tho 
construction  which  had  been  put  upon  them  by  Lord  Coke.”' 
p.  20.  There  is  notone  expression  in  tho  Statute  of  Mo¬ 
nopolies  the  meaning  of  which  had  become  bettor  settled  than 
thnt  of  the  words  “  tirst  inventor,"  ns  may  be  scon  from  tho 
quotation  made  from  Dollaml's  Case,  ante  p.  14.  According 
to  Lord  Lyndhuhst's  remark  in  HomchiU  Go.  v.  Heilson, 
already  quoted,  “Tho  first  person  who  discloses  tho  inven¬ 
tion  to  the  public  is  the  first  inventor."  No  reason  rain  be 
suggested  why  this  construction  was  not  contemplated  by 
those  who  framed  tho  Act  of  1880,  and  why  it  was  not: 
intended  to  be  embodied  in  it  ns  inncli  as  the  construction 
upon  another  point  adopted  by  Lord  Coke.  Such  indeed 
has  been  the  import  attached  to  the  phrase  by  our  own 
courts.  A  large  portion  of  the  reasoning  of  the  court  in 
Gaglcr  v.  Wilder  is  addressed  to  this  very  subject,  and  is 
intended  to  show  that  it  is  not  to  be  interpreted  literally,  but 
is  to  bo  applied  properly  to  tho  ono  who  brings  n  discovery 
to  tho  knowledge  of  the  public.  How  common  it  is  to  attach 
this  meaning  to  tho  phrase  may  bo  seen  on  recurring  to  tho 
jxtrncts  which  have  boon  given  from  the  decisions  in  Sey¬ 
mour  v.  Osborne ,  nnto  p.  17,  Washburn  v.  Ooultl,  p.  18-11). 
Agawam  Co.  v.  Jordan,  p.  19,  Whitelg  v.  Swuyne,  p.  10,  anu 
Singer  v.  Walmsey,  p.  25.  Anothor  may  be  added  oil 
account  of  its  especial  pertinency  from  the  decision  of  Judgo 
Hall  in  Ransom,  v.  Mayor,  1  Fisli.  252.  “If  tlio  plaintiff) 
lid  not1  uso  reasonable  diligence  to  perfect  tlio  invention 
patented  after  tho  idea  of  it  was  .  first  eoncoived,  and 
in  tho  tneantimo  other  persons  not  only  conceived  tho  idea, 
but  porfeeted  the  invention,  and  practically  applied- it  to- 
public  uso  before  tlio  invention  of  tho  plaintiffs  had  boon' 
bo  far  porfeeted  that  it  could  bo  applied  to  practical  use, 
tlio  plaintiffs’  patont  is  void,  beenusethoy  wore  not  tho  first1 
and  originnl  invontors  of  tho  thing  patented."  p.  272/ 
Another  thing  which  seems  to  lmvo  had  its  influonco  in  lead¬ 
ing  Judgo  Stoiiy  to  his  conclusion,  is  tho  provision  contained’ 
in  tho  Acts  of  1798  and  of  1881),  for  uotorinining  contro- 


REDUCING  AN  INVENTION  TO  PRACTICE.  31 

vorsics  bctwcon  two  conflicting  applications.  This  introduced 
into  our  system  a  feature  undoubtedly  now,  though  since 
adopted  to  somo  oxtont  in  thnt  of  Great  Britain.  But  it  wont 
no  further  than  to  settle  tho  contest  between  two  competitors 
and  to  provide  means  for  ascertaining  which  is  entitled  to’ 
the  patont.  It  introduced  no  chnngc  in  tho  principles  upon 
which  priority  of  invention  is  to  bo  determined.  Thnt  is  loft 
to  be  ascertained  by  tlio  sumo  criteria  ns  in  a  trial  at  law 
upon  tlio  validity  of  a  patont.  There  is  not  n  word  in  eitlior 
of  the  statutes  that  countenances  the  idea  that  by  a  prior  in¬ 
ventor  is  meant  anything  else  than  the  person  who  shows 
thnt  lie  is  tlio  man  whom  tho  courts  would  adjudge  to  bo  the 
rightful,  patentee;  not  a  syllable  that  countenances  tho  sup¬ 
position  thnt  tho  person  intended  is  ho  who  hns  conceived 
the  inveulion,  but  has  never  reduced  it  to  pmetico,  whntovor 
progross  lie  has  mndo  short  of  that  toward  perfecting  it. 

■  Wo  fail,  therefore,  to  discover  in  what  was  alleged  by 
Judgo  Story  or  in  any  other  quarter,  the  slightest  reason 
for  dispensing  with- -.vlint  is  manifestly  an  essential  featuroin 
any  well-regulated  patont  systom,  mid  one  which  lias  been 
commended  to  us  by  tho  long  oxporiouco  of  tho  oldest  ono 
known,  that  of  Great  Britain.  It  is  the  system  which  our 
legislature  adopted,  and  thcro  is  no  indication  thnt  they  did 
not  intend  to  oinbmeo  this  prinuiplo  as  woll  us  tho  rest.  Tho 
whole  spirit  of  both  seems  to  requiro  that  inducements  should 
be  held  out  not  merely  to  prosecute  now  inventions,  but  to 
bring  them  before  tho  world.  Tho  rewards  each  holds  out 
are  intended  for  these  who  givo  their  fellow-citizens  tho  fruits 
of  their  ingenuity,  and  it  is  an  entiro  pervorsion  to  put  such  a 
construction  on  our  legislation  as  bestows  thoso. rewards  on 
the  man'  who  withholds  thorn  from  his  country. 

In  short,  it  defeats  the  principal  object  of  requiring  that’ 
tho  formor  embodiment  of  an  mvontion  shoulcl  have  been 
put  m  use  in  order  to  invalidate  n.pntent,  which  is  thnt  the 
public  should  obtain  a  knowledge  of  it.  Thnt  such  is  tho 
real  object  cannot  bo  reasonably  doubted,  and. should  not  bo 
forgotton.  But' to  seouro  it  tho  uso  must,  manifestly- be  a 
publievone.  To  requiro  that  it  should  have  been  in  uso,  yet 
allow  a.  uso  inprivato  to  satisfy  tho  requirement,  involvos  an 
absurdity. 

Somo  sorupio  has  been  expressed  (by  Dallas,  J.,  for  in- 
stonco,  in  Hill  v.  Thompson,  W.  P.  0.  289)  ns  to  tho  poworof 
the  State  to  doprivo  a  man  of  tho  privilege  of  using  anow  a 
device  which  ho  had  discovered  before  tho  patentee,  and  had 
in  actual  uso.  No  ono  ovor  thought,  howovor,  of  its  boing 
wrong  to  dony  such  a  privilege  to  the  porson  who  makes  tho 
same  discovery  afterward,  though  his  discovory  is  an  inde- 


LETTERS 


George  B.  Prescott 


COMMISSIONER  OF  PATENTS, 


Thomas  A.  "Edison 


JPapfes  and  <$M*ampfcs 


LETTERS  OF  GEORGE  B.  PRESCOTT  TO  THE 
COMMISSIONER  OF  PATENTS. 


New  Yoke,  June  2,  1876. 

IIon.  .T.  M.  Thacuer, 

Commissioner  of  Patents. 

Sir:  The  application  of  Thomas  A.  Edison  for  Let¬ 
ters  Patent  for  improvements  in  Duplex  Telegraphs, 
Case  No.  99,  filed  September  1,  1871,  which,  by  your 
decision  of  Mnrcli  20,  1876,  when  ready  for  issue  will 
be  granted  to  Edison  iind  Prescott,  assignees  of  Edison, 
clearly  and  tnimislnkeably  embraces  tho  invention  for 
which  Letters  Patent  No.  162,033,  of  April  27,  1876, 
were  issued  to  Edison  and  Harrington. 

In  tho  preliminary  descriptions  in  tho  two  applica¬ 
tions  (tho  application  of  1873  having  been  by  consent 
of  the  examiner  amended  in  this  respect  May  20,  1876) 
the  object  of  the  invention  purports  to  be  to  enable 
two  operators  to  simultaneously  send,  or  to  effect  the 
simultaneous  transmission  of,  two  different  dispatches 
or  signals  over  tho  saino  lino  wire  in  tho  same  direc¬ 
tion.  In  Patent  102,638  this  is  stated  to  bo  accom- 
/$»hcd  by  tho  transmission  of  positive  and  negative  cur- 
Kent*  over  tho  lino  to  effect  tho  reeoption  of  ono  mes¬ 
sage,- and  tho  increase  and  decrease  of  the  strengths  of 
these  currents  cither  positive  or  negative,  to  effect  tho 
reception  of  tho  other  message ;  while  in  Case  99  tho 
method  is  stated  to  bo  “  to  simultaneously  soud  over 
ono  wire  in  ono  direction  by  reversal  of  a  battery 
current  in  ono  instance,  and  increasing  and  decreasing 
tho  strength  of  the  current  in  the  other  instance." 

Tho  third  claim  of  Patent  102,683  is  for  "  tho  com¬ 
bination  with  tho  main  liao  circuit  of  a  reeoiving  in¬ 
strument  operated  by  changes  in  the  polarity  of  the  cur • 


rent  independently  of  tonsion,  with  another  receiving 
instrument  operated  by  changes  of  tension,  independent 
of  polarity,” 

This  is  a  broad  and  fundamental  claim,  legitimately 
and  properly  belonging  to  Case  99. 

The  fact  sought  to  be  expressed  by  the  terms  of  this 
claim  is  identical  with  that  recited  in  the  first  and 
second  olaiuis  of  Case  99,  and  the  language  employed 
is  in  effect  synonymous. 

A  receiving  instrument  operated  hy  "changes  in  the 
polarity  of  the  current,"  in  the  words  of  the  third  claim 
of  Patent  102,(139,  is  a  description  of  the  same  tiling  us 
“a  polarized  magnet"  which  “ respomls  to  change  of 
polarity,”  in  the  words  of  the  second  claim  of  Case  99. 
So  also  “a  receiving  instrument,  operated  by  changes  of 
tension,”  in  the  words  of  the  third  claim  of  Patent 
102,033,  is  a  description  of  the  same  thing  ns  an  “  ordi- 
nary  magnet”  which  "  responds  to  an  increase  and  de¬ 
cease  of  the  current,"  in  the  words  of  the  second  claim : 
of  Case  99. 

The  records  of  the  Patent  Olliee  show  that  the  original 
application  in  the  ease  or  Patent  No.  102,033,  was  filed 
April  20,  1873,  and  was  rejected  May  3,  1378.  A 
second  specification  was  filed  May  22,  1873,  upon 
which  action  was  suspended  at  the  request  of  the  attor¬ 
neys.  Both  of  these  specifications  stale  that  the  inven- ’ 
tion  has  for  its  object,  the  simultaneous  transmission 
two  despatches  or  signals  over  the  same  line  wire  fi^A 
x  "  opposite  (/iVreObns.’vjP'N'cilher  of  them  coiitain"any\ 
allusion  whatever  to  the  simultaneous  Irnnsmissroii  of 
two  despatches  in  the  same  dircction\^^2P.^ 

On  the  20th  of  March,  1875  (the  aimo  daylimt  you 
decided  that  the  Letters  Patent  upon  application  No. 
99  should  be  - issued  to  Kdison  and  Prescott),  a  third 
specification  was  filed  in  the  suspended  case,  which  was 
thereupon  allowed  by' the  Examiner,  without  further 
objection,  amendment,  or  alteration,  so  far  as  revealed  i 
by  tho  contonts  of  tho  file. 

In  this  now  specification  tho  description  and  claims 


were  altered  and  enlarged  for  tho  unmistakable  purposo 
of  embracing  tho  invention  sot  forth  in  application 
No.  99,  belonging  to  Edison  and  Prescott.  With  this 
view,  tlio  statement  of  the  object  of  tho  invention  was 
changed  so  as  to  include  the  simultaneous  transmission 
of  two  despatches  in  tho  same  direction,  and  in  further¬ 
ance  of  this  scheme  another  alteration  was  made  in  tho 
description  which  more  fully  illustrates  its  character. 
The  drawing  represents  an  apparatus  for  sending  two\ 
messages  simultaneously  in  opposite  directions,  but  with  I 
which  it  is  not  possible  to  send  two  messages  xmiuHmJ, 
ncously  in  the  same  direction.  To  got  over  tills  drift- 
culty  the  new  description  states  that  “tho  relay  A  B 
may  also  be  placed  at  a  number  of  stations,  if  A  or  II 
be  dispensed  with,  and  other  devices  applial  to  prevent  the 
mutilation  of  the  signals  hy  change  in  the  polarity  of  its 
iron  core.”  That  is  to  say,  if  one  element  of  the  com¬ 
bination  shown  in  the  drawing,  and  described  and 
claimed  in  the  specification  of  Patent  192,033,  bo  en¬ 
tirely  removed,  and  some  other  device,  neither  described 
therein  nor  shown  in  the  drawing,  bo  substituted  there-  j 
for  (for  example,  the  only  one  thus  far  invented,  the  dc- ; 
vice  shown  in  Ctisc  99  belonging  to  Kdison  and  Prescott),  j 
then  the  apparatus  would  bo  competent  to  perform  the/ 
function  claimed  for  it,  viz.:  the  simultaneous  trans¬ 
mission  of,  two  despatches  in  the  same  direction.  , 
vYs  I  have  before  shown,  the  fundamental  principle 
of  the  invention  consists  in  _  tho  combination  of  a  re¬ 
coiling  instrument  operated  by  changes  in  the  polarity 
of  tine  current  independent  of  its  strenglh,  with  another 
receiving  instrument  operated  by  changes  in  tho 
strength  of  the  current  independent  of  its  polarity. 
The  examiner’s  letter  of  May  8d,  1878,  rejecting  the 
original  application  of  April  26th,  1873,  as  then  pre¬ 
sented,  shows  conclusively  that  he  understood  the  rela¬ 
tion  of  the  separate  elements  of  this  combination  to  tho 
slate  or  tho  art  at  that  time.  Subsequently,  Kdison 
assigned- one-hnlf  his  right  iu  this  invention  to  me,  and 
then  filed  a  new  application  subject  to  this  assignment, 


known  os  Case  99,  in  which  the  fame  elements  were 
again  presented  and  properly  claimed  in  combination. 
While  the  latter  application  was  pending  in  the  Patent 
Office,  Georgo  Harrington,  with  the  connivance  of  Edi- 
son,  sought  to  deprive  me  of  my  rights  in  this  invention, 
A  contest  ensued,  which  resulted  in  your  decision  o[ 
March  20th,  1876,  that  tiic  patents  for  Case  09,  when 
ready  for  issue,  will  he  granted  to  Edison  and  Prescott 
In  utter  disregard  of  botli  the  letter  and  tlio  spirit  of 
this  decision,  tho  Examiner  subsequently  allowed  Edi¬ 
son's  suspended  application  of  April  20th,  1878,  to 
pass  to  issue,  after  having  been  amended  by  the  inser¬ 
tion  of  a  new  claim,  covering  in  tho  broadest  forms  tho 
invention  which  forms  the  subject,  matter  of  Case  99. 
This  patont  wns  granted  to  Edison  and  Harrington  by 
virtue  of  an  assignment  executed  and  recorded  several 
days  after  yonr  decision  of  Mareli  20th,  1876,  and 
moro  than  seven  months  after  the  assignment  to  me, 
which  you  decided  compelled  the  issue  of  the  patent 
for  this  invention  to  Edison  and  myself,  nud  not  to 
Edison  and  Harrington. 

Tho  great  wrong  thus  done  me,  in  violation  of  both  ' 
tiie  letter  and  the  spirit  of  your  decision,  is,  I  presume, 
beyond  roinedy  in  tho  Patent  Office,  and  I  must  look 
to  the  courts  lor  the  recovery  of  my  rights ;  but  there 
mny  bo  other  applications  of  Edison’s  on  filo  in  the 
Patent  Office,  and,  to  guard  against  a  repetition  of  the 
error  committed  in  issuing  Patent  No.  102,088, 1  linvo 
prepared  a  digest  of  tho  subject  matter  of  the  appiV.a- 
lions  which  were  assigned  specifically  to  me,  and  of'tiio 
caveats  describing  improvements  upon  the  same,  which 
digest  will  bo  forwarded  to  you  in  a  fow  days. 

I  havo  the  honor  to  be, 

Vory  respectfully, 

Your  ob’t  servant, 

Geohoe  B.  PjtEsoorr., 


I’liomas  A.  Edison,  dated  Aug.  19tli,  1874,  and  re- 
lorded  Aug.  29lli,  1874,  Liber  B.  18,  p.  02,  Transfers 
if  Patents ;  together  with  a  digest  of  the  subject-matter 
lontained  in  certain  applications  for  Letters  Patent  and 
invents,  subsequently  filed  in  the  Patont  Office  by  Mr. 
Edison,  in  which,  by  virtue  o(  the  terms  of  said  assign- 
nent,  I  linvo  also  nil  interest. 

The  assignment  of  Edison  to  Prescott,  of  August 
19th,  1874,  conveys  to  the  latter— 

First. — "  Certain  improvements  in  duplex  telegraphs," 
described  in  applications  for  Leltors  Patent,  numbered 
94,  95,  90,  97,  98,  99  and  100. 

Second. — “  Otl  c  j  oi  t  l  /  I  i  t  !  j  ij! 
Hie  descriptions  or  which  have  been  lodged  with  George 
M.  Phelps,  for  the  purpose  of  models  being  construc¬ 
ted."  said  improvements  being  described  m  applica¬ 
tions  numbers  111  nnd  112. 

Third.— “An  cqunl  undivided  intorcst  in  all  Letters 
Patont  of  the  United  Slates,  or  of  any  foreign  countries, 
which  may  bo  granted  for  all  or  any  of  said  inventions, 
m-jpr  any  future  improvements  tlioreon  made  by  cither 
party,  and  or  all  oxtonsions  nnd  reissues  of  any  such 
Letters  Patent." 

In  order  that  the  patents  for  tlicso  inventions  may 
be  properly  issued  to  Mr.  Edison  and  myself,  it  seems 
desirable  to  indicate  clearly  wlmt  are  the  particular 
inventions  described  in  the  abovo  named  applications, 
and  which  of  the  inventions  nnd  doviccs  described  in 
Edison’s  subsequent  oaveals  nnd  applications,  are  im¬ 
provements  thereupon. 


I  deem  it  unnecessary  to  fully  describe  nil  tlio  inven¬ 
tions  set  forth  in  the  nbove  mentioned  scries  of  applica¬ 
tions,  and  now  on  (lie  at  the  Patent  Office,  and  shall 
refer  only  to  such  ns  constitute  the  basis  of  subsequent 
improvements. 

The  preliminary  description  of  case  00  states  that 
“  the  object  of  this  invention  is  to  enable  two  opera¬ 
tors  to  simultaneously  send  over  one  wire  in  one  direc¬ 
tion  by  reversal  of  a  battery  current  in  one  instance, 
and  increasing  and  decreasing  the  strength  of  the  ear- 
ront  in  the  other  instance.''  *  *  '  «  *  * 

“By  duplicating  the  pnrtshcrcin  'dcscribcd,  fourtnins- 
mitting  operators  and  four  receiving  operators  can 
work  simultaneously  over  one  wire— two  or  each  being 
at  eaoli  end.”  The  above  described  invention,  with  the 
subsequent  improvements  upon  it,  constitutes 'the  quad¬ 
ruples  telegraph. 

Figure  1  shows  the  invention  as  perfected  and  em¬ 
ployed  in  actual  service. 

T'  is  a  double  current  transmitter  or  pole-changer, 
operated  by  an  electro-magnet,  local  batierv  and 
finger  key  IC,,  in  a  manner  well  understood.  ’  'I  lie 
ofitce  of  the  transmitter  T1  is  simply  to  interchange  the 
poles  of  the  main  battery  E1  with  respect  to  the  line  and 
ground  wires,  whonovor  the  koy  K1  is  depressed;  or,  in 
other  words,  to  reverse  the  polarity  of  Lhc  current  upon  ■ 
the  lino  by  reversing  tlio  poles  of  battery  E‘.  By  tlio 
use  of  properly  arranged  spring  conlacU  si  sj,  this  is- 
done  without  at  any  time  interrupting  the  circuit.1 
Thus  tho  movements  of  the  transmitter  T*  cannot  niter, 
the  strength  of  the  current  sent  out  to  tho  line,  but  only; 
its  polarity  or  direction.  Tho  second  transmitter  T*  is 
operated  by  a  local  circuit  nnd  koy  Kr  in  the  same’ 
manner.  It  is  connected  with  tho  battery  wire  12,  of 
ffio  transmitter  T:  in  such  a  way  that  when  tho  kov 
K  is  depressed  the  battery  E,  is  enlarged  by  tho  nddi-  i 
bon  of  a  second  battery  Ea  of  about  three  times  the  mini-’ 
her  orcolls,  by  moans  of  which  addition  it  is  enabled  to 
send  a  current  to  tho  line  of  four  times  the  original- 


trength,  but  tho  polarity  of  tho  current  with  respect 
o  the  lino  of  course  still  rcm-iins  ns  before,  under 
lontml  of  tho  first  transmitter  T*. 

At  the  other  end  of  the  line  are  the  two  receiving  in- 
itrnments  It1  and  JP.  Jl*  is  a  polarized  relay  with  n 
icrmnncnlly  magnetic  armature,  which  is  deflected  in 
mo  directi-m  by  positive,  and  in  tho  other  by  negn- 
-ive  currents,  without  reference  to  their  slrougth.  and 
his  rchiy  eonscqueutly  responds  solely  to  the  move- 
ncnls  of  key  K1,  and  o-jonttes  tho  soundor,  S1,  by  a 
ocal  circuit  from  battery  L1  in  tho  usual  manner.  Relay 
If*  is  placed  in  the  samo  main  circuit,  nnd  is  provided 
vitli  a  neutral  or  soft  iron  armature,  which  responds 
■villi  equal  readiness  to  currents  of  either  polarity,  pro¬ 
dded  they  are  strong  enough  to  induce  sufficient  iniig- 
letism  in  its  cores  to  overcome  the  tension  of  the  oppos- 
ng  armature-spring.  The  latter,  however,  is  so  ad- 
listed  that  its  retractile  loreo  exceeds  the  magnetic 
itlraetioii  induced  hy  the  currentof  the  battery  E1,  but 
s  easily  overpowered  by  that  of  the  current  from  I'l*  and 
lia  combined,  which  is  about  four  times  us  great.  There- 
•ore,  the  relay  IP  responds  only  to  the  movements  of 
coy  Ka  and  transmitter  T3. 

A  dilliciiltv  arises,  however,  in  this  connection,  from 
lie  fact  that  when  tho  polarity  of  the  current  upon 
,he  line  is  revorsod,  during  tho  time  in  which  tho 
trmnturc  of  IP  is  attracted  to  its  poles,  the  armature 
,v ill  rail  oil  for  an  instant,  owing  I  tin  cc  m  in 
jf’iall  attractive  foreo  during  tho  timo  when  the 
ihiinge  of  polarity  is  actually  taking  place,  and  which 
would  tend  to  confuse  the  signals  if  the  soundor 
was  connected  in  the  ordinary  way.  By  the  arrange- 
ncitl  shown  in  tho  figure,  tlio  armature  of  tho  rolny  IP 
nukes  contact  on  its  back  stop,  nnd  thus  oporntes  a 
iceoml  local  relay  S  by  means  of  a  local  battery  L. 
L'his  local  relay,  by  its  back  stop,  nnd  a  tfccond  local 
lottery  La  operates  tho  recoiving  sounder  Sa.  Thus  it 
will  ho  understood  that  when  relay  IP  attracts  its  anna- 
ure  tho  local  circuit  of  soundor  Sa  will  bo  closed  by 


tlio  buck  contact  of 'local  relay  S;  but  if  tho  armature 
of  R3  falls  oil'  it  must  roach  its  back  contact,  and  remain 
there  long  enough  to  complete  the  circuit  through  the 
local  relay  S,  and  operate  it,  before  tho  sounder  S3  will 
be  ufl'cclcd.  But  the  interval  of  no  magnetism  in  the 
relay  R3,  at  the  change  of  polarity,  is  too  brief  to  per- 
nut  its  armature  to  remain  on  its  back  contact  long 
cough  to  affect  the  local  relay  S,  and  thus  tho  signals 
from  K3  are  properly  responded  to  by  tho  movements 
of  sounder  S3. 

By  placing  tho  two  receiving  instruments  R  and 
>"  die  bridge  wire  of  a  •«  Wheatstone  balance,"  a 
duplicating  the  entire  apparatus  at  each  end  of  the  lii 
the  currents  transmitted  from  either  station  do  i 
allect  the  receiving  instruments  at  that  station.  Th 
m  figure  1  the  keys  K‘  and  K3  are  supposed  to 
at  New  York,  and  their  movements  are  responded 
only  by  the  receiving  relays  R>  and  K3  at  Bostc 
ihc  duplicate  parts  which  arc  not  lettered  operate 
precisely  the  same  manner,  but  in  the  opposite  dire 
t|on  with  respect  to  the  line. 

In  applying  tins  system  of  qnadrii|  lc\  t  i  s  iss  c 
“I’0"  bnes  of  considerable  length,  it  was  found  that  tl 
interval  of  no  magnetism  i„  the  receiving  relay  R 
(winch,  as  above  stated,  hikes  place  at  every  reversal  i 
in  the  polarity  of  the  line  current),  was  greatly  lengtl 
cued  by  the  action  of  the  static  discharge  from  til 
line,  so  that  the  contrivance  of  the  local  relay  S  wi 
not  sufiicicnt  to  wholly  overcome  the  difficulties  nrisin 

Adieostiitcriesistane.X-wnsUicrefii, 

I'hiccd  in  the  bridge-wire  with  the  receiving  inslru 
n.o"ts,R  n"d  li3,  and  shunted  with  a  condenser  r,  o 
CO  SKlcrahie  capacity.  Between  the  lower  plate  of  th 
condenser  mid  the  junction  of  the  bridge  mid  earth 
unonThn  ' dlt'°"'11  ‘•'lcc,ro‘l"ag"et,  r  was  placed,  actiaj 
upon  the  armature  lover  of  the  relay  R3,  and  in  the  earn' 
curren,  r°  Cft'°Ct  10,'.tl,is  1UT«"gcme„t  is,  that  when  tin 
Llv  L  I  0"0  |K!lnr,tjr  .a,ns03> 1,10  condenser  c  immedi 
ctcly  discharges  through  tho  magnet  r.  which  nets  non, 


wo  armature  lever  of  relay  Ra,  ami  rotnina  it  in  posi- 
•io"  lor  “  brief  l'mo  before  the  current  of  ibo  opposite 
rolarity  arrives,  anil  thus  serves  to  bridge  over  the  iii- 
orvnl  of  no  magnetism  between  the  currents  of  oppo- 
ito  polarity. 

Snob  is  tbo  invention  which  was  conveyed  by  Edi- 
on’s  assignment,  of  the  tilth  of  August,  187-1. 

A  ny  method  of  sending  two  communications  simul- 
tncously  ovor  the  same  wire,  cither  in  tbo  same  or  op- 
osito  directions,  or  in  both  directions,  one  by  changing 
ic  polarity  of  tbo  current  and  tbo  other  by  changing 
io  strength  of  tbo  current,  was  new  at  the  dnt°  of 
dison’s  invention,  and  was  therefore  patentable  in  its 
•oml  sense,  without  reference  to  the  particular  devices 
nployed  to  ellbct  the  necessary  changes  in  tbo  polarity 
•  in  the  strength  of  tbo  current.  This  fundamental  priti- 
plo  of  the  quadruple*  system  which  has  been  derciibed  I. 
embraced  in  Application  No.  00,  which  also  includes  '%/ 
o  arrangement  of  the  relay  Jia,  local  relay  S  and  'J-  'Z 
under  Sa,  above  set  forth.  ' 

Application  No.  112  describes  certain  improvements  A.wr 

the  apparatus,  for  the  purpose  of  equalizing  tbo  U 
mpensntion  Tor  sU-uic  discharge  by  means  of  gradu¬ 
al  condensers,  and  a  differont device  for  obviating  tlio 
ufusion  of  signals  produced  by  the  tendency  of  the 
utral  relay  io  open  during  the  time  the  change  of 
hirily  is  hiking  place. 

Application  No.  118  describes  a  method  of  coupling 
gctlici  two  quadruples  circuits,  such  as  that  ropre- 
"ted  in  figure  1,  by  means  of  repeaters,  so  that  direct 
mmimiention  may  be  carried  on  through  much 
sater  distances  than  is  possible  in  a  single  circuit. 

Jinny  or  the  caveats  subsequently  filed  by  Edison 
3  modifications  of  the  invention  described  in  case  00 
The  following  summary  of  such  of  these  caveats  as 


Caveat  No.  51,  Hied  December  0,  1874,  shows  a 
method  of  qiindruplcx  telegraphy,  and  is  an  improve¬ 
ment  upon  the  duplex  method  described  in  application 
00.  In  No.  00,  two  messages  may  he  sent  simultane- . 
oiisly  in  the  same  direction,  one  by  changes  in  the  - 
polarity  and  the  other  by  changes  in  the  strength  of  tho 
current.  The  same  thing  is  done  in  the  present  case,, 
except  that  two  polarized  relays  are  employed  in  lieu 
of  one  polarized  and  one  neutral  relay.  This  is,  there¬ 
fore.  an  improvement  on  No.  00,  the  fundamental  priri-. 
ciple  being  the  same  but  the  details  dillcrdnt.  The  ' 
two  receiving  instruments  at  each  end  of  the  line  aro 
placed  in  the  bridge-wireof  a  Wheatstone  balance,  thus 
rendering  it  possible  to  transmit  four  messages  simul¬ 
taneously. 

Caveat  No. -52,  tiled  December  0,  1S7-1,  also  shows  a  , 
method  of  qnadruplex  telegraphy,  based  on  the  duplex  , 
principle  described  in  No.  00,  one  message  being  trans¬ 
mitted  by  changes  in  the  polarity,  and  the  other  by 
changes  in  the  strength  of  the  currant.  This  caveat 
contains  an  important  improvement  in  the  quadruples 
apparatus,  consisting  of  an  extra  mngiict  acting  upon 
the  armature-lever  of  the  neutral  relay,  and  so  placed 
as  to  receive  the  charge  and  discharge  of  a  condenser 
connected  with  the  bridge-wire,  for  tho  purpose  of 
holding  the  armature  of  the  neutral  relay  while  the  re¬ 
versal  of  polarity  is  taking  place. 

Caveat  No.  55,  dnted  January  18,  1875,  describes 
other  improvements  in  the  details  ortho  method  of  du¬ 
plex  transmission  shown  in  application  No.  00,  tho 
fundamental  principle  remaining  unchanged.  It  con- k 
sists  in  an  improved  construction  of  the  polarized  relay, 
and  in  tho  employment  of  a  “  secondary  battery-  "  (a  v 
liquid  condenser)  to  neutralize  the  static  discharge  from  " 
tho  line.  It  also  contains  devices  for  repeating  front  ■ 
one  line  to  another. 

Caveat  No.  58,  dated  January  18,  1875,  describes  ; 


other  improvements  upon  tho  invention  set  forth  in 
application  No.  90,  and  showing  how  it  may  bo  adapted 
to  repeat  messages  from  one  circuit  into  another.  This 
improvement  is  embraced  in  application  No.  118. 

Caveat  No.  57,  dated  Jan,  18,  1875,  describes  other 
improvements  upon  the  invention  sot  forth  in  applies- 
tion  No.  99.  Instead  of  two  separate  relays,  a  singlo 
rolay  with  two  armatures  is  employed;  one  armature 
being  operated  by  changes  of  polarity  and  tho  other 
by  changes  of  current.  An  induction  coil  is  substi¬ 
tuted  for  tho  condenser  doscribod  in  caveat  No.  52,  for 
the  purpose  of  holding  the  neutral  armature  in  placo 
while  the  polarity  is  reversed.  An  induction  coil  is 
also  used  to  compensate  for  the  static  discharge  of  tho 

Caveat  No.  00,  dated  Jan.  18,  1875,  describes  fur¬ 
ther  improvements  upon  the  invention  set  forth  in  ap¬ 
plication  No.  99.  It  shows  improved  methods  of  con¬ 
structing  the  polarized  nnd  neutral  relays  to  render 
them  more  easy  of  adjustment ;  the  application  of  a 
condenser  to  the  bridge  wire,  for  the  same  purpose,  but 
in  a  different  manner  from  that  described  in  caveat  No. 
52 ;  and  the  application  of  a  repeating  local  relay  to 
the  polarized  receiving  relay.  It  also  describes  a  dif¬ 
ferent  method  of  transmitting  alternate  positive  and  r.cg-  • 
ntive  currents  by  one  key,  and  increasing  and  decreas¬ 
ing  tho  potential  or  strength  of  current  by  another  key 
at  the  same  station. 

It  will  readily  he  perceived  that  all  the  in  ventions 
and  devices  described  in  applications  Nos.  112  .ind  113, 
and  in  caveats  Nos.  51,  52,  55,  58,  57  nnd  GO,  are  mod¬ 
ifications  of,  or  improvements  upon,  the  invention  de¬ 
scribed  ill  application  No.  99,  which  contains  tho  fun¬ 
damental  principle  of  tho  qundruplox  apparatus.  And 
I  respectfully  submit  that  when  Mr.  Edison  conveyed 
to  me  one-half  interest  in  each  nnd  all  of  theso  inven¬ 
tions,  he  constituted  tno  irrevocably  the  owner  of  such 


one-half;  and  tlmt  iho  subsequent  application  Tor  a 
patent  on  the  amended  specification,  filed  in  tho  office- 
March  20, 1876,  and  tho  passing  by  the  Examiner  of: 
the  same  (thus  procuring  tho  issue  of  patent  No... 
162,083  to  Edison  and  Harrington)  was  manifestly  in 
derogation  of  my  rights,  and  was  surreptitiously  dis- 
obedient  of  your  decision  of  March  20,  1876;  that  the 
patents  for  these  inventions,  when  issued,  should  bo  , 
issued  to  Edison  and  myself. 

I  have  tho  honor  to  be,  very  respectfully,  your  obe- 


GKOIK1K  B.  PltKSCOTT. 


.New  York,  Deccmler  18(7i,  1876, 
Hon.  R.  Hollaed  Duell, 

Commissioner  of  Patents. 

Sin — I  desire  to  call  your  attention  to  certain  official 
acts  of  Mr.  Z.  F.  Wilber,  a  primary  examiner  in  tbo 
United  States  Patent  Office,  in  connection  witli  tbo 
matters  sot  forth  in  tlio  following  statement: 

On  tlio  10th  of  August,  1874,  Thomas  A.  Edison, 
by  an  assignment  recorded  August  20,  1874,  in  Liber 
R  18,  pngo  02  of  Transfers  of  Patents,  convoyed  to  mo 
a  half  interest  in  his  inventions  in  Duplex  Telegraphs, 
set  forth  in  his  applications  for  patents  therefor,  num¬ 
bered  04,  05,  06,  07,  08,  00  and  100,  and  in  certain 
other  of  his  inventions  in  duplex  telegraphy,  the  de¬ 
scriptions  of  which  were  lodged  with  George  M.  Phelps 
for  tlio  purpose  of  having  models  constructed  to  accom¬ 
pany  applications  for  patents  therefor. 

While  tho  nbovo  named  applications  were  ponding 
in  tho  Patent  Office,  on  tho  28d  of  January,  1875,  Mr. 
George  Harrington  addressed  a  petition  to  tlio  Commis¬ 
sioner  of  Patents,  asking  that  letters  patent  upon  tho 
aforesaid  applications  should  bo  granted  to  Thomas  A. 
Edison  and  himself,  as  assignees  of  Edison,  under  nn 
alleged  assignment  dated  April  4th,  1871,  and  rccordod 
iu  tho  Patent  Office  May  Otli,  1871,  in  Liber  U 18,  page 
1112,  of  Transfers  of  Patents. 

On  the  same  day  Mr.  Thomas  A.  Edison  addressed  a 
letter  to  tho  Commissioner  of  Patents,  without  my 
knowledge  or  consent,  withdrawing  his  request  for  tho 
issue  of  patents  upon  these  applications  to  Edison  and 
Prescott,  and  requesting  that  they  bo  issued  to  Hnrring- 
ton  and  Edison. 

Thereupon  tho  Commissioner  of  Patents  instituted 
nn  inquiry  into  the  scope  of  tho  two  assignments  re¬ 
ferred  to,  pending  which  lie  directed  that  tho  applica¬ 
tions  should  bo  transmitted  to  him.  Ho  nlso  directed 
Mr.  Wilber,  the  examiner  of  this  class  of  inventions,  to 


/?  7  5” 


report  to  him  the  meaning  of  the  expression  “  fast  tele¬ 
graphy  "  contained  in  the  assignment  to  Harrington; 
mid  therein  used  to  define  tbo  character  of  the  ittven- . 
tions  convoyed. 

On  tlio  20tli  of  January, 1875,  Mr.  Wilber  made  his 
report  to  the  Commissioner  of  Patents,  stating  substan¬ 
tially  that  fast  telegraphy  included  duplex  and  quad- 
rttplcx  systems  of  telegraphy,  and  so  covered  the  in¬ 
ventions  which  had  been  specifically  assigned  to  my¬ 
self. 

This  construction  of  the  Ilnrrington  and  Edison  in¬ 
strument  of  April  4,  1871,  was  contested  by  mo  upon, 
a  hearing  before  tho  then  Commissioner  of  Patents, 
and  niter  full  and  elaborate  arguments  by  the  respeo-. 
tivo  counsel  on  both  sides,  tho  Commissioner  decided 
on  March  20,  1876  [see  Official  Gazelle ,  vol.  7,  pager 
423],  that  the  patents  for  the  inventions  herein  referred; 
to  when  ready  for  issue  should  be  granted  to  Edison; 
and  Prescott,  and  not  to  Edison  and  Harrington,  thus 
completely  overruling  the  position  taken  by  Wilber  in 
his  report. 

On  the  very  same  day  that  the  Commissioner  made 
this  decision  in  my  favor,  namely,  March  20,  1876, 
Thomas  A.  Edison  revived  nil  old  application,  desig¬ 
nated  by  him  as  Case  H  (which  had  been  filed  April  20,  ■ 
1S73,  and  rejected  by  Wilber  May  8d,  1S73),  by  tho 
filing  of  amended  specifications  niul  claims  which  were 
intended  to  embrace,  and  did  in  fact  embrace,  the  most 
important  invention  contained  in  tho  applications  as¬ 
signed  to  me. 

This  old  application,  thus  amended  so  ns  to.  include 
one  of  tho  most  important  inventions  which  the  Com¬ 
missioner  of  Patents  had  just  decided  should  be  issued  • 
to  Edison  and  Prescott,  was  llirco  dnys  after  (his  do-  . 
cision  assigned  to  Edison  nnd  Harrington,  y.with  the 
ovidont  nnd  unmistnkcnblo  intent  to  defraud  mo  of 
my  rights. 

Immediately  alter  tho  Commissioner  lmd  rendered  his 
decision  oi  March'20,  Edison  and  Harrington  applied 


to  the  Secretary  of  tho  Interior  to  withhold  his  signa¬ 
ture  from  tho  patonts  which  should  bo  granted  by  tho 
Commissioner  to  Edison  and  Prescott  This  application 
was  ontortained  by  tho  Secretary  of  the  Interior,  nnd 
tho  subject  was  fully  argued  boforo  him  by  tho  respec¬ 
tive  counsel.  Ponding  his  decision,'  which  up  to  this 
timo  has  not  been  promulgated,  all  action  upon  these 
oases  was  directed  to  bo  suspended. 

In  utter  disregard  of  these  facts,  however,  and  whilo 
tho  applications,  the  titles  to  which  woro  in  dispute, 
were  in  the  hands  of  tho  Secretary  or  tho  Interior,  Mr. 
Wilber,  on  tho  24th  of  April,  1875,  allowed  tho  patent 
upon  tho  rovived  and  amended  application  above  re¬ 
ferred  to,  signed  the  file,  and  delivered  it  for  issuo  by 
tho  usual  channel  in  tho  Patent  Ollico. 

Thus,  in  utter  disregard  of  both  tho  letter  and  tho 
spirit  of  the  Commissioner's  decision  of  March  20th, 
1876,  and  in  wilful  disobedieueo  of  tho  orders  for  tho 
suspension  of  all  action  upon  tho  applications  for.tboso 
inventions  whilo  under  tiio  consideration  of  the  Secre¬ 
tary  of  tho  Interior,  Mr.  Wilber  allowed  Edison  s 
suspended  application  of  April  20th,  1873,  to  pass  to 
issuo,  after  having  been  amended  by  tho  insertion  of  a 
new  claim,  covering  in  the  broadest  terms  the  invention 
which  forms  tho  subject  matter  of  caso  99,  which  was 
assignod  to  Edison  nnd  Prescott. 

Bv  this  procedure,  Mr.  Wilber  causod  a  patent,  con¬ 
veying  the  tillo  to  tho  very  invention  which  was  in 
dispute  to  bo  granted  to  tho  parties,  to  whom  tho  Com¬ 
missioner  of  Patonts  had  previously  decided  that  it  was 
not  to  be  granted  j  thus  virtually  usurping  tho  official 
functions,  not  only  of  tho  Commissioner,  but  oven  of 
the  Secretary  of  tho  Intorior,  in  taking  upon  himself 
to  decide  ns  to  whom  this  invention  was  to  bo  awarded. 

Tho  Commissioner’s  inquiry  into  tho  title  to  caso  99 
was  practically  an  inquiry  into  tho  titlo  to  tho  inven¬ 
tion  claimed  in  case  H.  Wilbcr  himself  in  Ins  opinion 
of  Jhnunry  29,  put  both  enses  on  the  samo  footing;  yet 
Wilber,  in  violation  and  neglect  of  his  plain,  duty  in 


the  premises!  did  not  direct  tbo  attention  of  llio  Com¬ 
missioner  of  Patents  to  tlio  character  of  tlio  invention 
sot  forth  in  ease  H,  nor  to  the  fact  that  a  now  and  ex¬ 
panded  claim  had  been  filed  therein  covering  the  very 
invention  claimed  in  case  00.  It  was  also  tlio  duly  of 
tlio  examiner  to  notify  tlio  applicants  for  ease  00  of  tlio 
existence  of  a  prior  application  embodying  tbo  snmo  in- 
vention  ;  but,  ns  the  file  of  Cnso  00  shows,  Wilber  did 
not  give  that  information.  After  the  Commissioner's 
decision  was  announced,  Wilber  having  allowed  this 
patent  embodying  one  of  tbo  inventions  which  the 
Commissioner  had  decided  belonged  to  Edison  and 
myself,  ns  assignees  of  Edison,  still  failed  to  inform  tlio 
Commissioner  of  his  action,  and  consequently  tbo  patent 
upon  Cnso  IT,  for  tbo  invention  described  in  Case  00 
(being  patont  No.  102, G83,  dated  April  27th,  1876), 
was  issued  to  Edison  and  Harrington. 

Wilber,  as  the  examiner,  was  the  only  person  in 
the  Patont  Oilice  who  could  identify'  the  invention  for 
which  this  patent  on  Case  II  was  granted,  and  it  will 
til  us  bo  seen  that  Wilber  not  only  failed  to  carryout 
the  direction  of  tlio  Commissioner  of  Pulents  contained  • 
in  his  decision  of  March  20,  1876,  that  the  patent  for  ■ 
this  invention,  when  issued,  should  be  issued  to  Edison, 
and  myself,  but  indicated  in  some  way  that  it  was  a 
patent  to  be  issued  to  Edison  and  Harrington,  whereby 
it  was  wrongfully  so  issued. 

I,  therefore,  clinrgo  upon  tbo  foregoing  facts,  in  con¬ 
nection  with  tbo  grant  of  Letters  Patent  of  tlio  United 
States,  102,033 : 

First — That  Mr.  Wilber  wilfully' ami  improperly 
neglected  to  inform  the  Commissioner  ol  Patents  of  tbo 
cxislenco  in  tbo  Patent  Offico  of  n  prior  application  of 
Thomas  A.  Edison  for  n  patent  embodying  substan¬ 
tially  tbo  same  invention  ns  that  described  and  claimed 
in  Edison’s  application,  designated  Case  00,  although  ho  • 
well  know  that  tlio  Commissioner  was  ongnged  in 
inquiring  into  tbo  question  of  the  ownership  of  the  said 


Secondly — That  ho  wilfully  and  improperly  neglected 
.o  notify  tho  applicants  for  Cnso  00  that  an  older  appli¬ 
cation  for  a  patont  for  substantially  tho  snmo  invention 
is  that  described  and  claimed  in  Case  00  was  on  filo 
uul  in  his  possession  ns  tho  examiner  of  tbo  class  of 
inventions  to  which  this  application  belonged, 

Thirdly — That,  well  knowing  the  soopo  of  tlio  Com¬ 
missioner's  inquiry  and  decision,  and  well  knowing 
that  tho  invention  described  in  Cnso  00  had  boon 
assigned  to  Edison  and  Prescott,  Wilber  wilfully  neg¬ 
lected  to  inform  tbo  Commissioner  that  Edison’s  old 
application,  filed  April  20,  1878,  and  rejected  by  him 
(Wilber)  May  8,  1873,  bad  been  revived  by  tlio  filing 
on  Mnrcli  20, 1876,  of  nn  amendment  covering  the 
identical  invention  described  in  Caso  00,  nnd  which  tlio 
Commissioner  bail  decided  belonged  to  Edison  and  my¬ 
self. 

Fourthly — That,  well  knowing  the  force  nnd  effect  ol 
tbo  Commissioner’s  decision  and  order  made  March  20, 
1876,  directing  that  tlio  pntents  for  tbo  inventions 
described  in  certain  cases,  among  them  Caso  99,  when 
issued,  should  bo  issued  to  Edison  and  Prescott,  ns 
assignees  of  Edison,  Wilber  nevertheless  wilfully  neg 
lected  to  inform  tbo  Commissioner  of  tho  fuot  that 
Edison’s  aforesaid  application,  amended  March  20 
1S76,  was  for  substantially  tlio  snmo  invention  ns  tbn 
described  and  claimed  in  Case  09. 

Fifthly  — That  Wilber,  well  knowing  that,  by  tin 
routine  of  the  Patent  Ofiice,  Edison’s  amended  npplicn 
'  tion,  onco  signed  and  delivered  by  him,  would  go  ti 
patent  without  attracting  further  notice,  did,  on  tin 
24th  of  April,  1876,  sign  tho  said  filo  and  delivor  tin 
snmo  for  issue  by  tlio  usual  channel,  nolwithstnndin! 
tho  fact  that  he  (Wilber)  know  that  the  invention  d( 
scribed  and  claimed  in  tho  said  application  was  in  sut 
stance  identical  with  the  invention  described  an 
claimed  in  Case  99.  .  .  „  . 

.  I  also  dcsiro  to  call  your  attention  to  the  follow  in 


Aa  soon  ns  possible  nflor  rooming  notice  of  the  issuoof 
tlio  letters  patent  102,083,  nbovo  roferrecl  to,  I  addressed 
to  tlio  Commissioner  of  Pntonts  two  letters,  copies  of 
which  will  bo  found  in  tlio  onclosed  pamphlet.  In: 
my  letter,  on  page  0, 1  referred  spcciflcnlly  to  tbo  inven¬ 
tions  assigned  to  mo.by  Edison  and  embraced  in  tlio' 
Commissioner’s  decision  of  March  20,  1875,  ns  follows: 

Tho  assignment  of  Edison  to  Prescott  of  August 
19th,  1871,  conveys  to  the  latter— 

First  "Certain  improvements  in  duplex  tele¬ 
graphs  ”  described  in  applications  for  letters  patent, 
numbored  94,  95,  90,  97,  98,  99  and  100. 

Suomi—'1  Otiior  improvements  in  duplex  telegraphs, 
tho  descriptions  of  which  linvo  been  lodged  with  Geo. 
M.  Phelps,  for  tho  purposoof  models  being  constructed," 
said  improvements  being  described  in  applications 
numbers  111  and  112. 

Case  111  had  boon  delivered  by  Wilbor  to  the  Com¬ 
missioner  of  Patou  ts,  nnd  had  been  retained  by  tho  Com¬ 
missioner  during  tho  time  that  ho  was  engaged  in  tho 
inquiry  into  tlio  controversy  between  IEnrriiigton  nnd 
myself  upon  the  question  of  title. 

Tho  Commissioner’s  decision  of  March  20th  covered 
tlio  inventions  for  which  models  lmd  boon  mndc  by 
Georgo  M.  Phelps.  It  was  well  known  to  Wilber  that 
Phelps  made  tlio  model  filed  with  Case  111,  having  • 
been  specially  informed  of  the  fact  by  Georgo  M- 
Phelps,  .Tr,,  the  clerk  or  foreman  of  his  father,  Georgo 
M.  Phelps,  under  whoso  supervision  the  models  wero  • 
made,  and  who  visited  Washington  for  tlio  express 
Purpose  of  identifying  these  models  with  Cases  111  and 
112,  nnd  who,  under  the  authority  of  tlio  Commissioner' 
nnd  incompnny  with  Mr.  Wilbor,  visited  tho  machinist’s 
room  in  tho  basement  of  tho  Patent  Odico  and  picked 
out  tlio  models  mndo  by  him,  nnd  nftcrwnrds  made  an  • 
affidavit  in  which  ho  deposed  that  bo  identified  tlio 
models  accompanying  Cases  111  nnd  112  ns  boitig  two 
of  tho  models  mndo  under  his  supervision,  and  handed 
tho  affidavit  to  Mr.  Wilber. 


•  Caso  111  was  not  specified  iu  tho  application  of 
Edison  nnd  Harrington  ns  ono  of  the  cases  upou  which 
.they  requested  tho  Seerotary  to  withhold  his  signature, 
.but  tho  Into  Commissioner  of  Pntonls,  ns  I  am  informed 
by  him,  directed  Wilber  not  to  issuo  pntonts  upon  any 
of  tho  cases  which  had  boon  before  him,  111  being  onu 
of  them,  until  tho  determination  of  tlio  application 
mndo  to  tho  Seerotary  of  tho  Interior.  Yet  Caso  111 
,  was  patented  October  6,  1876,  and  the  loiters  patent 
therefor,  No.  108,886  were  issued  to  Thomas  A.  Edison, 
instead  of  to  Edison  nnd  myself,  ns  assignees,  ns  tho 
Commissioner  of  Patents  had  ordered.  Tlio  filo  of 
Cnso  111  shows  that  tho  application  wns  received  in  tlio 
Patent  Offico  on  January  20, 1875 ;  that  tlio  first  notion 
upon  it  wns  on  March  25,  1875  (fivo  days  nflor  tho  dnto 
j  of  tho  Commissioner’s  decision),  nnd  that  ou  tlio  27th  of 
..March  Wilbor  allowed  tbo  application. 

The  noxt  notion  in  the  case  wns  on  tho  80th  of  Sop 
lumber,  1876,  when  Wilber  again  oxaminod  nnd 
allowed  tho  application,  Bigncd  tho  filo,  and  sent  it  out 
for  issuo  through  tho  usual  channel.  Ou  tlio  day  tliut 
Wilber  did  this  tlio  Into  Commissioner's  torm  of  offioo 
expired. 

Wilber  not  only  did  not  inform  tho  Commissioner  of 
Patents  Hint  ho  bnd  allowed  Caso  111,  but  deliberately 
disoboyed  the  order  of  tbo  Into  Commissioner  in  sign¬ 
ing  tho  filo  nnd  Bonding  it  out  for  issue. 

I  thcroforo  charge  iu  this  connection  : 

First — That  Wilber,  well  knowing  that  Edison’s  ap¬ 
plication  for  a  pntont  dosignntcd  by  Edison  ns  cnso  111, 

*  covered  ono  of  tho  inventions  conveyed  by  Edison  to 
himself  and  Georgo  15.  Proscott,  assignees,  novortholoss, 
wilfully  and  improperly  nbstninod  from  notifying  tho 
Commissioner  of  Patents,  that  the  snid  application  lmd 
been  allowed  on  March  27th,  1875,  and  lmd  been  re¬ 
examined  nnd  again  nllowcd  by  him,  tho  said  Wilber, 
on  tho  80th  of  September,  1876. 

.  Secondly — That  Wilbor,  woll  knowing  that  Edison’s 
•Caso  111  was  ono  of  tho  applications  affected  by  tho 


Commissioner's  order  or  March  20, 1876,  niul  well  know- 
ing  that  the  patent  for'  the  invention  described  in  the 
said  ease,  when  issued,  was  by  the  order  of  the  Commis¬ 
sioner  to  bo  issued  to  Edison  and  Prescott,  ns  assignee^ 
nevertheless,  wilfully  abstained  from  informing  the 
dorks  and  other  officers  of  the  Patent  Office  having  in 
shargo  tho  issue  of  patents,  that  be  hnd  passed  the  said 
Case  111,  and  that  it  was  one  of  the  cases  governed  by 
die  Conmtisssioncr’s  decision. 

Thirdly — That  Wilber,  w'ell  knowing  that  by  tho 
routine  of  the  1’atont  Offico  tho  said  Caso  111,  when 
ligned  by  him,  would  go  to  patent  without  attracting 
.urtlier  notice,  in  utter  disregard  and  violation  of  tho 
>rdcr  of  the  Commissioner  of  Pntcnts,  did  sign  tho  filo 
>f  the  said  caso  and  transmit  it  for  issue  through  tho 
isual  chnnnol,  whoroby  tho  said  Caso  111  was  patented 
October  6, 1870,  the  letters  patent  therefor,  No.  108,383, 
icing  granted  to  Thomas  A.  Edison  instead  of  to 
L’liomns  A.  Edison  and  George  11.  Prescott,  assignees, 
s  tho  Commissioner  of  Pateuts  had  ordered. 

Fourthly — That  Wilber,  well  knowing  that  Edison’s 
ipplination,  designated  Case  111,  covered  one  of  tho  in- 
motions  assigned  to  Edison  nnd  Prescott,  nnd  having 
iropcrly  transmitted  or  delivered  the  filo  ami  contents 
if  Case  111  to  tho  Commissioner  in  person,  as  one  of 
he  eases  in  controversy,  in  responso  to  tho  order  of  tho 
Commissioner  to  transmit  to  him  all  the  cases  in  ques- 
ion  for  examination  of  tho  title;  nevertheless,  oh 
September  80,  1876,  tho  dny  that  Commissioner 
lhachcr’s  term  of  offico  expired,  passed  Case  111.  and 


fully  issued  to  Edison  alone. 

Fifthly — That  Wilber  wilfully  abstained  1 
information  to  tho  proper  nuthorities  of  i 
Offico  in  regard  to  Caso  111,  and  thereby 
Letters  Patent  188,886  to  bo  wrongfully 


Thomas  A..  Edison  when  ho  know  that  by  a  lottor  to 
tho  Commissioner  of  Pateuts,  dated  March  26,  1876, 
from  Georgo  B.  Prescott's  counsel,  Messrs.  Porter, 
Lowroy,  Sorcn  and  Stone,  tho  authorities  of  tho  Patent 
Office  had  boon  explicitly  informed  that  Caso  111  was 
one  of  the  oases  in  wliioh  Prescott  claimed  an  interest. 

Sixthly— That  Wilber  wilfully  permitted  Caso  111  to 
go  to  patent,  nnd  to  bo  wrongfully  issued  to  Tliomae 
A.  Edison,  well  knowing  that  tho  Commissioner  of 
Patents  hnd  boon  requested  to  permit  Mr.  Phelps  to  ex¬ 
amine  tho  models  of  Caso  111,  and  other  oases,  and  well 
knowing  that  after  such  examination  Mr.  Phelps  had 
made  affidavit  tlint  he,  Phelps,  recognized  tho  model  of 
Caso  til  as  a  model  made  by  him  for  Edison  nnd  Pres¬ 
cott,  and  well  knowing  that  tho  Commissioner’s  decision 
of  March  20th,  1875,  ordered  that  tho  patonts  in  tho 
cases  so  recognized  by  Phelps,  should  bo  .ssued  to 
Edison  and  Prescott. 

In  these  acts  of  Mr.  Wilbor  there  are,  I  respectfully 
submit,  grave  offences  against  tho  honor  nnd  dignity  of 
the  .Patent  Office,  and  gross  violation  of  my  rights  and 
or  the  rights  of  tho  public.  I  am  interested  in  n  largo 
number  of  applications  for  patonts  for  tho  same  class  of 
inventions  as  those  hero  referred  to,  which  are  now 
pending  in  the  Patent  Offico,  and  I  respectfully  sub¬ 
mit  that  my  interests  in  thoso  ensos  are  soriously  im¬ 
perilled  ir  the  power  to  dispose  of  them,  ns  has  boon 
done  in  the  cases  now  brought  to  your  attention,  is 
longer  confided  to  Mr.  Wilbor.  And  I  further  sug¬ 
gest  that  a  duo  regard  to  the  rights  of  tho  public,  and 
especially  of  thoso  having  business  with  that  branch  of 
the  Patent  Offico  now  under  tho  chnrgo  of  Mr.  Wilbor, 
demands  that  ho  bo  romoved  from  tho  place  wliioh  he 
now  holds. 

I  have  tho  honor  to  bo  your  obediont  sorvant, 

George  B.  Prescott. 


BEFORE  A  COMMISSION 


COMMISSIONER  OF  PATENTS, 

IN  THE  MATTER 


Charge .s  preferred  by  GEORGE  li.  PRESCOTT  against 
Z.  F,  WILBUR,  a  Principal  Examiner  in  the  United 
States  Patent  Office. 


BRIEF  OF  GEORGE  B.  PRESCOTT. 


BEFORE 


oo35vC3s<rissxojsr 


(Kjonnubsimm1  of  ptcufs. 


In  tlio  matter  of  tho  charges  or 
Grioifnu  B.  Prescott 
against 

Examiner  AVilrer. 


BRIEF  OF  GEORGE  B.  PRESCOTT. 


In  tlio  matter  or  tho  grant  of  Letters  Patent  or  tho  United 
States,  Ho.  IG2,G33,  or  case  It. 

1.  Inasmuch  ns  a  like  jintcntnblo  invention  was  shown 
or  described  in  each  of  the  two  applications  designated  as 
caso  H  and  easo  89,  which  were  both  ponding  in  tlio  Patent 
Ofllco  at  tlio  same  time,  which  invention  wns  claimed  in  tlio 
later  application  [caso  99],  though  not  specifically  claimed 
in  tho  earlier  ono  [caso  II],  a  ly/msi-intcrfercnce  existed 
•  between  tho  two  applications,  upon  which  tho  Examiner 

wns  bound  by  the  rules  and  practice  of  tho  Ofllco  to  take 
proper  action. 

2.  Tho  application  flrst  tiled  [caso  II],  having,  subse¬ 
quently  to  tho  tiling  of  tlio  second  application  [ease  99],  been 


amended  by  tho  insertion  in  tlie  specification  of  now  matter, 
and  of  a  now  claim,  synonymous  in  its  terms  with  omiot 
tho  existing  claims  of  tho  second  application,  so  tlmt  each 
11 1  t  emit  cli  like  claim  lor  tho  same  patentable 
subject  matter,  the  Examiner  was  bound  by  tho  rules  nail 
practice  of  the  Ofllco  to  notify  tho  applicants  in  both  eases, 
and  to  compel  tho  withdrawal  or  the  said  claim  from  the 
lator  application,  as  a  necessary  pre-requisite  to  its  insertion 
in  tho  earlier  one. 

3.  Tho  Commissioner  of  Patents  having  ofllcially  decided 
that  tho  invention  shown,  described,  and  claimed  in  appli¬ 
cation  No.  80  belonged  to  Edison  and  Prescott,  and  having 
afterwards  made  special  inquiry  of  tho  Examiner  whether 
enso  II  was  or  was  not  embraced  within  that  decision,  the 

Examiner  was  in  duty  bound  to  inform  the  Co . . 

that  tho  snme  subject  matter  was  cluimcd  in  case  II  that 
was  claimed  in  case  00.  ; .  F 

1.— In  the  case  under  consideration  two  sepamtu  applica¬ 
tions  for  letters  patent  for  duplex  tolcgmplis  wero  tiled  by 
tho  same  inventor,  Edison.  The  ilrst  application  [caso^j 
was  tiled  by  Jliiun  &  Co.,  nttornoys  of  record,  on  the  20th 
of  April,  1873,  and  the  second  application  [case  00]  by 


soon,  in  application  No.  Oft.  But  case  II  lmcl  already  boon 
on  (lie  in  tlie  olllco  sixteen  months,  and  consequently  had  a 
prima  facie  right  to  tlio  broad  claim  ns  expressed  in  claim 


The  first  ol'  theso  claims,  although  objectionable  in  form, 
is  clearly  intended  to  cover  the  combination  of  apparatus 
described,  whereby  two  distinut  messages  may  bo  trans¬ 
mitted  over  ono  wire,  in  the  mine  direction  and  at  the  sanio 
time ;  in  other  words,  it  is  a  claim  limited  to  certain  devices 
arranged  to'produco  a  specific  result,  via:  duplex  trans¬ 
mission  in  the  sumo  dircctftm.  Tlio  second  claim,  on  the 
contrary,  is  a  brand  claim,  iii  terms  expressly  covering  tbo 
combinatioii  specified  whoa  applied  ton  duplex  telegraph, 
that  is,  when  employed  to  produce,  in  any  form,  tlio  result 
technically  termed  duplex  telegraphy,  i.  c.,  tlio  siimiltniicons 
transmission  of  two  independent  sets  of  signals  upon  ono 
lire.  ' 

There  can  bo  no  doubt  ns  to  wlint  this  claim  was  in- 
ended  to  cover.  But  Mr.  Wilber  goes  into  a  lengthy 
irgumont,  apparently  for  tlio  purpose  of  proving  that  the 
-wo  inventions  uro  entirely  distinct,  and  that  no  claim, 
lowovcr  brand,  in  ono  case,  could  interfore  in  the  slightest 
logreo  with  a  claim  for  exactly  the  sanio  tiling  in  tlio  other 
msc,  becauso  the  effect  produced  is  ono  species  of  duplex 
elcgraphy  in  ono  case,  and  another  species  of  duplex  tele- 
pnpliy  in  the  other  ease.  If  tlio  combination  by  which 
hose  olfccts  are  produced  in  each  case  possessed  no  novelty 
n  itself,  then  his  reasoning  would  have  some  force.  But 
t  scarcely  requires  moro  than  an  elementary  knowledge  oi 
ho  principles  of  pntont  law,  in  order  to  understand  that  if 
luplox  telegraphy  in  either  of  its  two  forms  is  tmpnble  oi 
icing  effected  by  tlio  uso  of  tlio  sumo  combination  of  doviccs 
ir  elements,  a  combination  in  itself  novel,  then  tlio  applies- 
ion  in  which  priority  is  proven  is  most  unquestionably  on- 
itled  to  a  claim  for  tlmt  combination  brand  enough  in  its 
copo  to  cover  its  application  to  duplex  tclogiiiphy  in  any 
brm;  aswollas  to  additional  claims  i  if  nuioro  restricted 
hnmetor,  covering  tlio  particular  nrrnngomonls  which  are 
mployed  in  that  particular  branch  of  duplox  tologrhphy. 
low  this  is  precisely  wlint  actually  was  claimed,  as  wo  have 


>licntions  Y  Tlio  now  specification  in  ease  11  stales  that 
invention  1ms  for  its  object  “  the  simultaneous  transmit ■ 
i  of  two  different  despatches  or  signals  over  the  Mine  tine 
■efrom  opposito  directions,  or  ill  the  name  direction;”  mid 
t  “  tlio  invention  consists  in  the  transmission  of  posihte 
l  negative  currents  over  the  tine  to  effect  the  reception  of  one 
mage,  and  tlio  incrcane  and  dccreana  of  the  strength  of  that 
rents ,  either  positive  or  negative,  to  effect  the.  reception  oj 
other  message 

laving  thus  distinctly  stated  Unit  tlio  invention  in  easo 
consists  in  tlio  nso  of  tlio  very  coinliinalioii  described 
1  claimed  in  case  9!),  Edison  then  proceeds  to  claim  it  in 
blondest  possible  manner  in  easo  IT,  ns  follows: 
f ’ho  combination,  with  the  main  line  circuit,  of  a  rmicinj 
'ruincnt  operated  by  changes  in  the  polarity  of  the  current 
cpendcntly  of  tension,  with  another  receiving  instrument 
rated  by  changes  of  tension  independent  of  polarity,  incam 
changing  the  polarity  of  the  current,  and  means  of  changing 
tension  of  the  current,  substantially  as  and  for  the  purpoa 
cijied. 

Tow,  when  wo  coniparo  this  claim  with  tlio  second  chuni 
:nso  99,  wo  iiiul  that  tlio  language  of  the  two  claims  is  it 
ict  synonymous. 

\.  receiving  instrument  operated  by  “changes  in  the  polar 
of  the  current,”  in  tlio  words  of  tlio  third  claim  of  till 
ended  ease  U,  is  a  description  of  the  same  thing  as  i 
olari/.ed  magnet”  which  “  responds  to  change  of  polarity,' 
tlio  words  of  tlio  second  claim  of  case  99.  So,  also,  “i 
civing  instrument  operated  by  changes  of  tension,”  in  tin 
rds  of  tlio  third  olnim  of  case  11,  is  a  description  of  I  In 
no  thing  as  an  “  ordinary  magnet”  which  “  responds  lo  ai 
reuse  and  decrease  of  the  current.1’  in  tho  words  of  tin 
:ond  claim  of  easo  99.  .  . 

L'hus,  alter  tlio  filing  of  tho  amendment  of  March  20th 
iro  were  two  sopnmto  applications  in  tho  hands  of  tin 
nminer.  Tho  title  of  tho  invention  is  tlio  same  in  eacl 
io;  tho  object  of  tlio  invention  in  each,  ns  sot  forth  in  tin 
laniblo  of  thu  respective  specifications,  is  tho  same;  tin 
•entiou  itself  is  stated  to  consist  in  tho  same  combination 
[l  employed  in  cncli  easo  for  tho  same  purpose,  lly  lh 
ug  of  this  unloaded  specification,  therefore,  tho  two  nppll 


“instructions,  would  lmvo  to  bo ,  modi  fled,  tlmt  J  would 
“  hold,  only  tlioso  referral  to  in  his  decision,  or  identiOed 
“  ns  being  embrnced  within  it  I  told  him  that  I  hail  never 
“  eonsideral  this  am  an  being  for  any  invention  claimed  in 
“  the  Edinon-Prcncott  canen,  nml  tlmt  it  lmd  been  (lied  a  year 

and  a  lialf  beforo  the  Prescott  assignment.  Ho  then  nil* 

“  vised  mo  to  send  it  forward  immediately,  and  avoid  fur- 
“  thcr  coiinilamt.  I  hereupon  I  returned  to  my'  room,  went 
“  over  tlio  enso  (somowlmt  imrricdly),  and  sent  it  forward 
“  that  same  afternoon.” 

Now,  it  will  bo  observed,  in  the  first  place,  tlmt  the  pre¬ 
tence  of  Sorrell’s  telegram  containing  a  complaint  is  with-.;: 
out  any  foundation  in  fact.  Tho  telegram  speaks  for  itself) 
and  in  his  account  of  tlio  interview  in  his  letter  to  Wilber, 
Commissioner  Timelier  says  not  a  word  about  a  “  conn 
plaint.”  Tlio  excuse  of  a  “complaint”  is  purely  an  inven¬ 
tion  of  Mr.  Wilber’s.  Ho  well  know  Unit  Sorrell  was  not 
the  attorney  in  the  enso ;  tlmt  ho  had  no  sort  of  connection 
with  it ;  and  tlio  fact  of  his  asking  to  huvb  it  issual,  under 
existing  circumstances,  was  in  itself  a  suspicious  occur¬ 
rence.  But  Mr.  Wilber  carefully  conceals  this  fact  from 
tlio  Commissioner,  if  ho  did  not  actually  mislead  him  in  the 
mnttor;  and  then,  as  tlio  Commissioner  himself  says,  “Ill 
“  reply,  you  (Wilber)  stated  that  tho  application  amid 
“  not  imnniblg  bo  brought  under  tlio  operation  of  that  tie- 
“  cision,  an  it  lean  for  different  nnbjcet  mattern,”  etc.  Now,  is 
it  to  bo  supposed  for  one  moment,  that  tlio  Commissioner, 
in  tho  face  of  his  recent  decision,  would  have  advised  the . 
issue  of  tlmt  patent  without  farther  cxiimiimtion,  if  ho  hail 
known  that  tho  nubjeet  matter  was  tlio  same,  and  not 
different,  both  being  for  duplex  telcgrapliB,  and  that  in  each 
of  tho  two  applications  tlio  invention  purported  to  be  ccr- : 
tain  means  for  duplex  transmission  in  tho  sumo  direction, 
these  means  being  tho  sanio  combination  in  each,  and  con¬ 
taining  claims  precisely  synonymous,  unless  ho  lmd  been 
deliberately  ami  intentionally  deceived  by  Mr.  Wilbert.: 
Tho  Commissioner  must  depend  upon  tho  good  faith  of  his 
subordinates  in  such  matters.  It  is  a  physical  impossi¬ 
bility  for  him  to  personally  investigate  every  enso  of  this 
kind.  Ho  appears  to  lmvo  tnkon  every  reasonable  precau¬ 
tion  to  guard  against  orror,  by  questioning  tho  Examiner 


that  ofllcc,  tho  course  was  loft  clour  for  issuing  a  patent  for 
tlio  iurention  embodied  ill  it  to  Edison  nml  Harrington,  by. 
menus  of  the  recently  amended  application  in  case  U,  pro." 
vided  Wilber  could  deceive  the  Commissioner  into  tbs'* 
belief  tlmt  case  H  was  not  one  of  the  cases  affected  in  any 
way  by  Ids  recent  deuisiou. 

A  day  or  two  before  Harrington's  appeal  to  the  Secretary 
of  the  Interior,  Wilber  suys  the  Commissioner  “asked  mo 
“  what  course  I  was  taking  in  tho  Edison  eases  boforemo.  I 
“  told  him  I  had  cleaned  up  those  which  hud  been  awaiting 
“action,  rejected  some  and  passed  some.  Jle  said  I  had 
“belter  not  tet  any  go  out  until  Mr.  Prescott  hail  hail  an  oppor- 
“  t unity  to  identify  such  an  he  claimed,  anil  which  were  not 
“  identified  in  the  assignment.  I  asked  him  if  tho  automntio 
“cases,  about  which  there  could  bo  no  possible  dispute; 

“  should  bo  held  up  too.  lie  said  no,  that  they  could  go 
“  right  ahead,  but  to  kohl  others." 

Alluding  to  case  II  subsequently,  Wilber  says  ho  “'looked 
“over  tho  case  in  turn,  thought  it  was  probably  all  right, 

“  and  then,  in  pursuance  of  the  wishes  expressed  by  tho: 
“Commissioner,  lot  it  lay.” 

As  case  H  was  not  an  antomntic  case,  how  could  Wilber, 
issuo  it  in  tho  face  of  tho  above  order  1  It  will  bo  seen  that; 
bo  was  equal  to  tho  emergency.  After  tho  Secretary  had 
tied  up  00,  everything  remnins  quiet  foru  few  weeks,  whenn 
favorable  opportunity  occurs,  and  the  whole  plot  being  cun¬ 
ningly  arranged,  the  scheme  is  successfully  exploited. 

Edison  goes  to  Mr.  Sorrell’s  ofllco  in  Now  York,  in  his 
absence,  and  gots  Mr.  Sorrell’s  oillco  manager  to  telegraph 
to  tho  Commissioner  about  case  II— over  tlio  signature  of 
Mr.  Sorroll,  who  had  nothing  to  do  with  the  case.  (Why  not 
tclcgruidi  over  his  own  name,  or  of  his  authorized  attorneys; 
Munn  &  Co.  t)  Tho  telegram  is  referred  to  Wilber,  and  lie 
tells  tho  Commissioner  that  tho  application  roferred  to  by 
Mr.  Sorroll  could  not  possibly  be  brought  under  tho  opera¬ 
tion  of  that  decision,  us  it  was  for  different  subject  matters; 
thut  ho  lmd  never  considered  this  case  ns  being  for  any 
invention  claimed  in  tho  Edison-Prcscott  cases,  and  that  it 
had  been  filed'  nearly  a  year  and  a  half,  before  tho  l’rcscolt  ■ 
assignment;  and  in  tho  belief  that  Wilber’s '  statement  was  V 
trao,  tho  Commissioner  advised  him  to  issuo  it.  Wilber  is 
in  such  haste  to  issuo  it,  although  it  hns  been  lying  quiotly 


in  his  (llos  for  two  years,  that  ho  cannot  stop  to  read  it 
through,  but  sends  it  forward  that  samo  afternoon.  Ono 
of  Harrington’s  attorneys,  not  of  record  in  tho  case  (Chan, 
dlor),  is  ready  with  tho  final  fee;  it  is  promptly  paid,  and 
tho  whole  nffiiir  is  finished  up  during  a  single  day. 

Mr.  Wilber’s  defence  of  his  action  in  regard  to  cases  H 
and  119,  consists  in  attempting  to  show— first,  that  tho  two 
inventions  are  not.  tho  samo,  and,  second,  that  if  they  aro 
tlio  same,  ho  did  not  know  or  bolievo  that  such  was  tho 

As  beforo  stated,  tho  real  question  is  not  whether  tlio 
two  inventions  aro  tho  same,  but  whether  tlio  samo  patent- 
able  combination  is  shown,  described,  and  claimed  in  each 
of  tho  two  applications,  it  is  scarcely  necessary  after  all 
that  hns  boon  said  to  dwell  at  length  on  this  point.  . 

Moth  tho  applications  in  question  describe  substantially 
tlio  same  elements  combined  together  to  produce  tho  samo 
result,  this  result  being  tho  simultaneous  nud  independent 
transmission  of  two  despatches  upon  ono  wire.  No  attempt 
has  been  made  to  show  that  thin  result,  when  produced  by 
means  of  this  combination,  is  not  now,  nor  can  it  bo  domed 
that  the  result  is  described  as  being  produced  bj  substan¬ 
tially  the  samo  combination  in  both  cases.  Simultaneous 
double  transmission,  technically  termed  duplex  telegraphy, 
is  of  two  kinds,  namely,  transmission  in  opposite  direc¬ 
tions  and  transmission  in  tho  same  direction,  i  hose  aro 
two  forms  of  one  thing,  ono  form  being  just  as  much  a 
duple  v  telegraph  as  the  other,  no  more,  no  less.  Numerous 
examples  of  each  of  these  forms  ol  duplex  telegraphs  wue 
already  known  at  tho  date  or  Edison  s  first  application. 
Some  of  these  combinations  (for  example,  Bossohn .  s)  mo  so 
organized  as  to  be  capable  of  simultaneous  double  trans- 
mission  either  in  opposite  directions  or  in  tho 
lion,  by  simply  changing  tho  order  ol  succession  of  the 
diilJreut  parts  of  the  apparatus,  viz.,  tlio  two  transmitting 
kevs  and  the  two  receiving  instruments  upon  the  lino,  a 
change  requiring  the  exercise  of  nothing  beyond  ordinary 
skill  and  judgment,  us  distinguished  tom ^  intcn  on. 
Others  are  organized  for  tho  special  purpose  ot  In plox 
transmission  in  opposite  directions,  .making  use  of  amigos 
which  aro  not  available  for  ti  i  si  i  sio  i  tho_8a  no  nroc. 
tion,  and  others  again  aro  exactly  tho  reverse  of  this,  being 


organized  for  the  special  purpose  of  duplox  transmission  in 
tho  sumo  direction,  making  use  of  devices  which  are  not 
nvailnhlo  for  transmission  in  opposite  ilircctions. 

It  is  clear,  therefore,  that  tit  is  combination  is  patentable 
ns  n  combination  by  menus  of  which  duplex  transmis¬ 
sion  in  nny  form  may  be  eil’ectcd,  and  tills  without,  refer¬ 
ence  to  the  mere  geographical  distribution  of  thu  different 
part  of  tho  apparatus  upon  the  line.  On  tho  contrary,  tho 
great  vnluo  of  tho  combination,  which  forms  the  gistof  tlio 
invention  both  in  case  II  and  case  Off,  consists  in  the  very 
fact  that  it  is  callable  of  being  employed  for  duplex  tele-:, 
grapliy  under  so  many  different  conditions,  whereas  nearly 
every  ono  of  the  previously  invented  combinations  were  of 
limited  application,  and  therefore  of  far  less  practical  value 
than  this. 

The  fact  that  tho  same  patcntablo  invention  is  shown, 
described  and  claimed  in  both  these  eases,  has  been  shown  ' 
boyoml  question  by  tho  testimony  of  Mr.  Prescott  and  Mr,- 
Pope.  In  addition  to  this,  the  attention  or  the  committee: 
is  invited  to  tho  opinion  of  Mr.  Moses  G.  Farmer,  a  gen-p 
tlomnn  who  bears  a  deservedly  high  reputation  as  an 
export  in  cases  of  this  kind. 

Mr.  Farmer’s  opinion  was  forwnrdcd  in  answer  to  a  tele-: 
graphic  despatch  ;  lie  had  no  opportunity  to  consult  with 
others,  and  no  information  us  to  what  tho  opinion  of  others 
upon  tho  subject  might  be.  The  opinion  is  ns  follows : 
Geo.  B.  Prescott,  Esq. 

Sir — In  your  telegram  of  Feb.  10th,  you  say: 

“  Please  give  mo  your  opinion  ns  to  whether  the  inven¬ 
tion  shown,  described,  or  clnimcd  in  Edison’s  case  !I9,  em¬ 
braces  the  invention  shown,  described  or  elnimcd  in  uny: 
of  Edison’s  applications  in  caso  II;  nnd  whether  the  com-: 
bination  described  in  tho  third  claim  in  ease  II,  does,  or 
docs  not,  cover  an  essential  elumcnt  or  feature  of  the 
invention  shown  in  case  !)!>t” 

In  reply,  I  bog  to  submit  tho  following  statement  as  pre¬ 
senting  my  views  of  tho  matters  above  referred  to : 

In  the  first  plneo,  tlicso  two  inventions,  viz.,  ense  H  and 
caso  09,  have  a  common  object;  it  is  this:  to  puss  simul¬ 
taneously  two  signals  instead  of  one,  over  a  singlo  wire 
which  connects  two  distant  stntions. 


Tills  otid  1ms  often  boon  attained  boforo  in  various  ways 
and  by  the  use  of  different  means:  in  some  cases  by  tho 
use  of  currents  varying  only  in  strength  but  not  in  direc¬ 
tion  ;  in  other  eases,  by  tho  use  of  currents  varying  simul¬ 
taneously  both  in  strength  and  direction. 

In  these  two  inventions,  however,  means  aro  so  em¬ 
ployed  that  ono  opomtor  makes  use  of  currents  varying  in. 
strength  only ;  wliilo  tho  other  operator  mnkos  use  of  cur¬ 
rents  varying  solely  in  direction. 

Tho  means  employed  to  produce  these  changes  in  current 
strength  and  currant  direction,  so  far  ns  these  functions  are 
concerned,  are  well  known  electrical  equivalents,  although 
tho  derails  of  tho  apparatus  employed  to  accomplish  tho  . 
desired  ends  differ  in  the  two  eases,  and  for  this  reason  : 

In  case  II,  the  object  is  to  pass  tho  two  simultaneous  sig¬ 
nals  in  opposite  directions  over  tho  wire ;  wliilo  in  caso  00 
tho  desired  object  is  to  .pass  tho  two  simultaneous  signals 
over  tho  wire  in  the  snmo  direction. 

This  fact  necessitates  a  modilicatiou  of  thu  devices  em¬ 
ployed.  In  case  09  the  apparatus  used  for  reversing  tho 
direction  of  tho  current  simply  interchanges  tho  connec¬ 
tions  of  the  battery  poles  between  tho  line  and  earth  wires, 
using  only  ono  battery  for  this  purpose. 

lii  case  H  it  is  necessary  to  provide  twice  ns  much  bat¬ 
tery  ns  in  caso  although  only  ono  half  of  it  is  used  at 
any  ono  time,  so  that  tho  virtual  strength  of  cun-put  on 
tho  lino  is,  at  any  time,  equal  in  case  II  to  what  it  is  m  caso 
99,  so  fur  as  tho  action  of  tho  reversing  key  nflccts  it. 

In  caso  If  tho  middlo  of  tho  main  battery  is  in  permanent 
connection  with  tho  main  line,  wliilo  its  two  extreme  poles 
are  put  into  nltomnto  connection  with  the  earth  pinto  by 
the  notion  of  the  reversing  key ;  and  it  so  happens  that,  by 
•the  action  of  this  key,  alternate  positive  and  negative  cur¬ 
rents  are  sent  into  tho  line,  and  that,  too,  equally  ns  well  ns 
i„  case  99,  where  the  two  end  connections  of  the  main  bat¬ 
tery  with  tho  earth  and  lino  aro  nltcrmitoly  interchanged 
by  the  action  of  tho  reversing  koy.  , 

Next,  with  reference  to  the  action  ot  the  koy  which 
changes  tho  strength  of  the  current. 

in  case  H  this  key  K'  by  its  action  simply  introduces 
more  or  less  resistance  into  tl  e  i  c  c  it  tl  o  it  ite 
rially  affecting  tho  olectromotivo  force,  anil  so  it  ollccts, 


just  iis  truly,  tv  clmngo  in  tito  strength  or  tlio  current  tu 
does  the  koy.oin  case  91),  which  key  o simply  introduces 
into  the  main  circuit  more  or  loss  electromotive  force  with, 
out  necessarily  greatly  or  appreciably  altering  the  resistance 
of  such  main  circuit;  ami  since  strength  of  current  is  sim¬ 
ply  tlio  relation  of  electromotive  force  to  resistance,  in  any 
circuit,  it  matters  not  whether  we  clmngo  the  electrmnntive 
.force  or  vary  tlio  resistance  in  such  circuit,  siuco  in  either 
enso  wo  alter  its  strength  of  current. 

I  am  therefore  led  to  give  it  as  my  opinion:  1st,  that  U19 
invention  shown  and  described  in  Edison's  ease  99  em¬ 
braces  essentially  an  elomont  of  grcnt  iinportanco  in  case 
JI ;  and  2d,  that  tlio  third  claim  of  enso  II  does  really 
cover  that  peculiar  feature  of  case  99  which  refers,  us  above 
explained,  to  tlio  entire  iudcpcmlcnco  of  tlio  two  suts  of 
simultaneous  signals. 

MOSItH  tl.  FAKMBIt... 

U.  S.  Naval  Ihrjmlo  Station,  Newport,  It.  L 


It  will  bo  observed  tlintMr.  Farmer  begins  by  saying  that 
tlio  two  inventions  ••  have  a  common  object;”  anil  this  object 
ho  says  is  “  to  pass  simultaneously  two  signals  instead  of 
“  otic,  over  a  singio  wire  which  connects  two  different  sta- 
“tions.”  Then  he  goes  on  anil  explains  the  peculiarities  of 
detail  in  tlio  two  cases,  showing  that  ci|uivalcut  elements 
are  used  in  each,  and  dually  sums  up  by  saying  that,  in  his 
opinion,  “  the  invention  shown  and  described  in  Edison's 
“enso  99  embraces  essentially  an  element  of  great,  import- 
“  mice  in  caso  II,”  and  “  that  tlio  third  elnim  of  ease  II 
“  docs  really  cover  that  peculiar  featuro  of  enso  99  which 
“refers,  ns  above  explained,  to  the  entire  independence  of 
“  tho  two  sets  of  simultaneous  signals.’' 

It  is  argued  by  tho  Examiner,  that  although  each  appli¬ 
cation  does  contain  a  description  of  tho  same  combination, 
and  although  this  combination  is  employed  in  each  enso 
to  accomplish  tho  sumo  oml,  viz.,  duplex  telegraphy,, yet- 
as  in  ono  caso  tho  duplux  transmission  is  in  the.  samp 
direction  and  in  tho  other  it  is  in  opposite  directions,  thiit 
the  results  are  ditl'crcnt, and  oonscigiciitly  the  inventions, 
must  bo  different  In  reply  to  this  wo  say  that  tlio  results  ' 
are  not  different.:  Each  Invention  purports  to  bo  an  improve- 
uient  in  duplex  telegraphs,  anil  describes  and  claims  a  pur?  - 


combination  applicable  to  duplex  telegraphy.  Iho 
ition  is  now,  it  is  the  same  in  each  case,  tho  only 
tl  difference  being  tho  particular  subdivision  or  spo- 
duplex  telegraphy  to  which  it  is  applied.  Now  this 
•luiin  lor  this  now  combination  belongs  to  one  of 
uses  or  tho  other;  it  cannot  belong  to  both,  for  tho 
1  not  grant  two  patents  for  the  same  invention.  Tho 
icr  maintains  that  it  belongs  to  neither,  but  must  bo 
ted  as  referring  to  the  particular  arrangement  ot 
,vhich  are  made  usu  of  to  produce  tho  particular 
•  the  result  in  each  case.  If  tho  combination  claimed 
ot  a  now  ono,  this  reasoning  would  have  some  forco; 
attempt  is  made  to  disprove  its  novelty,  and  wo  may 
ire  assume  Hint  this  much  is  granted.  If  it  is  granted, 
pillion t  fulls  to  tlio  ground,  for  tho  principle  is  well 
’that  tho  inventor  of  a  new  combination  is  entitled 
cut;  its  exclusive  uso  for  any  purpose  to  which  it  is 
iblo.  The  language  of  tho  courts  on  this  point  is 
ml;  emphatic. 

10  plaintiffs  patent  covers  all  tho  modes  and  pro- 
is  by  which  the  principle  of  his  invention  is  made 
stive  in  practice.”  ( Tilghmun  v.  ll'crtr,  2  Fisher,  220.) 
m  patentee  is  not  obliged  to  state  everything  to  which 
nvciition  is  applicable  in  order  to  bo  protected  in  tho 
y  meat  of  tlio  exclusive  right  to  such  things.”  (Fib  v. 

,  3  Fisher,  flii.) 

'lien  the  menus,  devices,  and  organization  are  pat- 
d,  the  patentee  is  entitled  to  tho  exclusive  uso  of  this 
Imnicnl  organization,  device,  or  means,  for  all  tho 
1  and  purposes  to  which  they  can  bo  applied,  to  overy 
Btion,  powor,  and  capacity  of  his  patented  machine, 
lout  regard  to  tlio  purposes  to  which  ho  supposed 
innlly  it  was  most  applicable,  or  to  which  ho  supposed 
rim  solely  applicable,  if  such  wero  liis  original  viow.” 
ccr  v.  lloach,  4  Fisher,  12.)  This  was  reaffirmed  hi 
isc  of  McComb  v.  JirutUe,  5  Fisher,  381. 
teems  to  us  that  it  needs  no  further  argument  to  show 
Mr.  Wilbor’s  admitted  incapacity  under  tho  circuin 
cs  to  discover  anything  in  the  claims  of  caso  XI  which 
cts  with  those,  of  caso  99,  is  of  such  a  nature  as  to 
nsly  imperil  tho  important  interests  which  arc  confided 
in  nn  n  Prmciiml  Examiner  in  tho  Patout  Ofllco. 


Dine  ol  value!  ”  in  qtmdruplex  telegrai 
iof  all  tills,  when  the  Commissioner, 
ily  wholly  depcmlent  oil  tho  Examine 
o  tho  uliaractur  and  scope  of  ease  If, 
nine  about  it,  lie  informs  the  Commissii 
:cs,  that  ease  II  “coulit  not  inmibly  b 
opciutioii  ol  his  decision,  us  it  was  Ih 
ten  !” 

emnil—  Observe  tho  extreme  euro  wl 
Wilber  from  lirst  to  last,  to  prevent  tlii 
o  oven  of  the  '  existence' of  case  II  fi 
irney  or  other  parties  interested  in  ci 


ison  conveyed  his  interest  m  enso  1)9,  among  others,  tc 
.  Jay  Gould,  with  the  evident  intention,  ns  subsequent!} 
flier  rovonlcd  by  his  letter  to  tho  Commissioner  of  Patents 
January  23,  18715,  of  defrauding  Mr.  Prescott  of  ldi 
lits.  This  sale  to  Gould  is  evidence  tl  I 
lint  Prescott  commenced  at  least  as  early  as  January  4 
15,  mid  ns  an  arrangement  involving  interests  of  sael 
[gnitndo  is  not  usually  mado  in  a  moment,  it  probabl; 
nmeucvd  some  days  earlier.  If  all  the  subsequent  ex 
ordinary  acts  on  the  part  of  Mr.  Wilber,  in  relation  ti 
iso  two  cases,  were  in  furtherance  of  a  pre-arranged  plan 
is  quite  possiblo  Unit  oven  this  lirst  act  may  also  havehai 
nothing  to  do  with  it. 

On  Snturday,  tho  23d  of  January,  Edison  writes  a  lette 
the  Commissioner  of  Patents  from  Newark,  N.  J.,  in  wliio 
i  says : . 

“  I  therefore  withdraw  my  request  for  tho  issuoof  patent 
tor  Duplex  and  Quadruplox  transmission  to  Edison  an 
Prescott,  and  unite  with  Gcorgo  Harrington  in  his  pet 
tion,  this  day  tiled  in  your  ollice,  requesting  the  issue  < 
tho  letters  patent  to  Gcorgo  Harrington  and  myself,  i 
tho  proportions  set  forth  in  tho  power  of  attornoy  an 
assignment  of  April  4th,  1871.  and  tho  contract  tlierei 
recited.” 

This  letter,  which  couhl  not  have  reached  the  Comini 
suer  before  Monday,  January  25th,  1875,  formed  the  has 
r  the  action  of  tho  Commissioner,  which  is  thus  alluded  I 
Y  Wilber  on  page  2  of  his  statement : 

«  Some  time  in  January,  1875,  an  order  came  to  mo 
solid  to  tho  Commissioner  cases  94  to  100.  I  was  altc 
wards  sent  for  .'by  him,  mill  instructed  to  read  the  Hu 
rington  and  Edison  assignment  or  agreement,  and  repo 
in  writing  tho  meaning  or  scope  of  the  term  <  fast  sy  tom 
or  ‘fast  telegraphy,’  and  whether  inventions  of  this  cla 
were  included  thereunder.” 

Wilber  docs  not  state  how  long  afterwards  it  was  heft 
io  Commissioner  asked  him  to  report  in  writing  upon  t 
hove  mutter,  but  it  is  significant  that  his  report— a  .mot 
f  ingenious  sophistry— was  delivered  to  tho  Commission 


equally  sophistical  argument  in  opposition  to  Mr.  Prescott's 
charges  of  improper  action  in  this  oaso. 

Mr.  Wilber  makes  tlio  assertion  botli  in  his  statement 
page  -1,  and  again  in  his  argument,  page  45,  “  that  all  partici 
had  oilieiai  notice  of  the  existence  of  cnscs  A  to  XI  nearly 
three  months  beforo  the  issuance  of  II.”  Ho  oilers  m 
proof  of  the  truth  of  this,  ami  it  is  not  capable  of  prool 
In  his  report  to  tlio  Commissioner,  of  January  29th,  187C 
it  is  truo  Mr.  Wilber  incidentally  refers  to  “certain  othe 
cases,  numbered  by  letters  A  to  H  inclusive  (duplex  cases) 
ns  coming  within  tlio  seopo  of  tlio  Harrington  assigi 
meat;  but  this  is  in  no  sense  a  notice,  ollicial  or  otherwise 
to  “  all  parties  concerned.”  It  is  simply  a  private  con 
munication  to  tlio  Commissioner,  ami  contains  nothing  t 
indicate,  oven  to  him,  that  these  applications  were  mainly 
duplicates  of  tlio  later  scries.  Mr.  Prescott  knew  nothin 
of  tlio  contents  of  this  report,  nor  was  it  intended  tlint  li 
should  until  after  ease  II  was  allowed  to  go  to  patent  and 
pnss  into  tlio  hands  of  tlio  adverse  party.  There  is  not  on 
word  of  truth  in  tlio  statement  that  Mr.  Prescott  was  not 
lied  of  the  existence  of  case  IX  beforo  its  issuo  to  Ediso 
and  Harrington,  nor  was  any  notice  ever  given  him  tlinta 
Edison’s  cases  on  illo  in  tlio  .office  were  .open  to  tlio  inspe 
tion  of  all  parties  interested.  If  any  such  notice  was  givoi 
why  has  Mr.  Wilber  not  given  some  detailed  information  i 
regard  to  it t  ^ 

In  tlio  matter  of  tlio  grant  of  Lottors  Patent  of  tlio 
United  States,  No.  108,385,  (case  111). 

1.  Tlio  invention  described  in  application  Ho.  Ill,  of 
Tliomns  A.  Edison,  (lied  January  20,  1875,  was  included 
within  tlio  seopo  of  tlio  Commissioner’s  decision  of  March 
20,  1875,  and  tlio  Commissioner  was  duly  notified  by  Mr. 
Prescott’s  counsel  that  such  wus  the  case. 

2.  Tim  Commissioner,  in  piirsimnco  of  such  notification, 
ordered  Mr.  Wilber  not  to  issuo  any  of  Edison’s  applica¬ 
tions  (other  than  automatic)  until  Mr.  Prescott  hail  had 
an  opportunity  to  identify  such  of  them  ns  lie  claimed  were 
embraced  witbiu  the  seopo  of  tho  decision. 


3  Oaso  111  was  duly  idontilied  ns  ono  of  tlio  cases  com¬ 
ing  within  tlio  provisions  or  tho  Edison-Prescott  assign¬ 
ment.  As  a  necessary  consequence,  it  was  subject  to  tlio 
Commissioner's  decision  of  March  20th,  and  in  accordance 
therewith,  should  have  been  issued  to  Edison  and  Prescott. 
Mr.  Wilber  directly  violated  tlm  order  of  the  Commissioner 
by  issuing  enso  111  to  Edison,  in  any  case;  If,  ns  lio  assorts, 
ease  111  had  not  to  his  knowledge  been  identified,  then  bo 
could  not  possibly  lmvoknown  which  particular  applications 
had  been  idontilied  and  which  had  not,  anil  lie.  had  no 
right  to  issuo  any  of  tho  cases  without  this  knowledge.  If, 
as  wo  assert,  tho  enso  hail  been  identified  as  being  ono  ot  tho 
Prcscott-Edison  cases,  anil  the  'evidence  thereof  placed  in 
Mr.  Wilber’s  hands,  then  bis  violation  ortho  onlorwns 
clearly  an  act  of  wilful  disobedience. 

|.  Tho  assignment  of Edison  to  Prescott,  of  August  19  th, 
1874,  and  printed  in  full  on  page  35  of  tho  accompanying 
pamphlet,  marked  A,  convoys  to  tlm  latter,  by  an  instru¬ 
ment  under  seal,  certain  improvements  in  duplex  tele¬ 
graphs,  described  in  applications  numbered  94,  9u,  90,  97, 
98,  99,  and  100,  dated  August  19,  1874,  and  contains  in  ad¬ 
dition  thereto  tho  following  clause :  . 

“And  whereas,  said  Edison  has  also  invented  other  im- 
“provomonts  in  duplex  telegraphs,  the  descriptions  of 
“  which  have  been  lodged  with  Georgo  M.  I  helps,  for  tlm 

“purpose  of  models  being  constructed,  it  is  hereby  agreed 

“that  each  inventions  areinelndcd  in  this  press  t  gee  et 
“and  that  when  the  applications  for  patents  are  made,  tho  pat- 
“cuts  to  he  granted  in  accordance  herewith,  anil  that  tho  said. 

assanS-s 

109,'  hutosfve)  referred  to  therein,  wore  filed  °»  Soi’tomber 
2d,  1874.  No.  112  was  filed  on  December  28th,  18.4.  On  tlio 
23d  of  January,  Georgo  Harrington  made  application  to 
tho  Commissioner  of  Patents  to  have  tlm  above  mentioned 
applications,  including  No.  112,  issued  to  Edison  and  him¬ 
self,  instead  of  Edison  and  Prescott.  .  .  . 

In  a  letter  of  tlm  same  ilat  1  loit.„t  1  rtto 

from  Newark,  N.  J.,  Edison  withdrew  Ins  request  for  the 
issue  of 'tlieso  patents  to  himself  and  Prescott,  and  united 


with  Harrington  in  the  request  Hint  tlioy  bo  issued 
self  aiiil  Harrington. 

The  application  now  in  question,  ease  11 1,  was  II 
nary  20th,  1875.  This,  nmlcnso  112,  ]>rovioiisly  lile 
then  exactly  upon  tlio  same  footing,  caeli  of  thei 
cases  wiiose  descriptions  lmd  been  lodged  with  Mr. 
for  tlio  purpose  of  having  models  constructed.  U 
receipt  of  tlio  nbovo  communication  from  Edison  m 
rington  (which,  ns  tlio  24th  was  Sunday,  conhl  linn 
been  beforo  tlio  2.1th),  tlio  Commissioner  ordered  1 
ber,  ns  ho  says,  to  send  him  cases  01  to  100  (anil  p 
112  also).  Ho  likewise  instructed  Sir.  Wilbor,  at 
incut  interview,  to  road  tlio  Harrington  and  Edisoi 
nont,  or  agreement,  and  to  report  in  writing  tlio  n 
>r  scope,  of  llio  term  “  fast,  systems  ”  or  “  fast  tolc{ 
»nd  whether  inventions  of  this  class  (/.  e.,  duple: 
ions)  were  included  thereunder. 

On  the  2!ltli  of  January,  Mr.  Wilber  made  his 
eport  to  tlio  Commissioner,  slating  Unit  ho  was 
‘  opinion  that  tliu  cases  referred  to  clearly  fall  within 
‘.visions  of  tlio  assignment  anil  power  of  attorney 
1  to.”  This  construction  of  tlio  Harrington  and  Ed 
itrimient  of  April  I,  1871,  was  contested  by  Mr.  J 
lpon  a  hearing  beforo  the  Commissioner  of -Paten 
‘iter  full  and  claborato  arguments  by  tlio  respeeth 
icl  on  both  sides,  tlieCouimissioncr  decided  on  Mar 
87o,  that  the  patents  for  tlio  inventions  in  conti 
'•hen  ready  for  issue,  should  bo  granted  to  Edit 
’rescott,  and  not  to  Edison  and  Harrington. 

The  Commissioner’s  decision  or  March  20th,  187 
lortcil  in  the  Official  Gazette,  VII,  422. 

In  it  tho  Commissioner  sots  forth  in  full  tho  ussi 
if  Edison  to  Prescott,  including  tlio  express  provis 
lie  improvements  in  duplex  telegraphs,  tho  descrip 
vhich.liad  been  lodged  with  Mr.  Phelps  for  tlio  pm 
laving  models  constructed,  wero  to  bo  inuhided  in 
ignnient.  Obviously,  therefore,  it  only  remained 
ily  tho  particular  applications  embodying  these  ini 
ir  improvements  to  tho  siitisfnction  ol'  tlio  Ooninii 
o.plnco  thorn  on  exactly  tlio  same  footing  with  cast 
00.  Application  Ho.  Ill  was  allowed  by  tho  E: 
in  tlio  25th  of  March,  and  Mr.  Prescott,  as  ono 


partios  in  intbrost,  was  duly  notified  by  tho  attorney  on  tho 
"(itli.  Ho  thereupon  took  immediate  measures  to  call  tlio 
attention  of  tlio  Commissioner  to  tho  fact  that  this  applies- 
thin,  us  well  ns  *12  and  113,  woro  included  in  liis  decision. 
On  tho  same  day  ids  counsel  addressed  the  following  lottor 
to  tho  Commissioner: 

Hew  Yoitic,  March  20,  1875. 

Hon.  J.  M.  TiiAwimt, 

Onmmimioner  of  Palenlo, 

Washington,  U.  C. 

Sir:  We  havo  tho  honor  to  notify  you,  on  behalf  ol  Mr. 
C’r.  B.  Prescott,  that  caso  Ho.  Ill ,  by  Thomas  A.  Edison,  is 
ono  of  tho  inventions  specially  referred  to  and  covered  by 
tho  agreement  between  said  Edison  nml  Prescott,  dated 
August  tilth,  1874,  anil  therein  referred  to  anil  identified 
ns  follows :  “  And  whereas  tho  said  Edison  1ms  also  invented 
•i  other  improvements  in  duplex  telegraphs,  tho  descriptions 
“of  which  have  been  lodged  with  George  M.  Phelps  for  tlio 
“purpose or  models  being  constructed,  it  is  hereby  agreed 
« Hint  such  inventions  are  included  in  this  present  agree- 
«  ment,  iiud  that. when  tlio  applications  for  paten  ts  aro  made, 
« tho  patents  to  be  granted  in  accordance  herewith,  and  that 
“  the  said  Edison  shall  sign  tho  required  papers  therefor.  > 
We  are  informed  that  a  patent  is  about  to  issue  m  case 
Ho.  111. 

Wo  suppose  it  to  lie  incumbent  upon  Mr.  Prescott  to  sat- 
isfy  your  Honor  by  proper  proofs  of  tho  identity  ol  this  in¬ 
vention  witli  those  described  as  above  quoted.  Tho  ques¬ 
tion  here  would  bo  entirely  different  from  that  .made  on  tlio 
recent  hearing  before  you,  to  which  Mr.  Harrington  was  a 

*  *Wc  are  directed  by  Mr.  Prescott  to  ask  you  to  appoint  a 
time  for  a  hearing,  at  which  he  will  place  in  evidence  bolero 
YOU  tho  models,  descriptions  and  other  papers,  by  which  it 
will  ho  shown  that  tho  agreement  aforesaid  applies  to  and 
covers  caso  Ho.  Ill  and  other  cases,  to  wit,  Hos.  11-  am 
113,  as  well  as  certain  caveats,  the  numbers  ol  which  will 
bo  forwarded  to  you  in  a  day.  or  two,  tho  sumo  as  t  covers 
tiio  cases  which  wore  before  you  upon  tlio  hearing  rotor- 

Wo  will  also  ut  that  timo,  if  you  havo  any  doubt  upon 


D  distinct  assertion,  tliat  after  the  Commissioner  romlcrcd 
,  decision,  on  tiro  20th  of  March,  ho  segregated  tho  cases, 
iding  01  to  100  to  the  Secretary  of  tho  Interior,  mid  re- 
uided  the  .balance  to  him  (Wilber),  and  that  on  tho  21th, 
eouinionecd  to  examine  and  pass  upom  them.  Now,  by 
rcienco  to  tho  record,  it  will  be  seen  that  it  was  not  until 
meh  30th  that  tho  Secretary  of  tho  Interior  ordered 
scs  01  to  100  to  be  transmitted  to  him.  This  was  ten 
i yt  after  the  Commissioner's  dccisiou  had  boon  rendered, 
ven  days  after  Wilber  had  commenced  aution  upon  tho 
sos  remanded  to  him,  andjire  days  after  ho  had  passed 
ion  and  allowed  easo  111.  The  Commissioner,  nt  tho  end 
1  his  decision,  says:  “I’/io  applications  are  remanded  to 
the  Principal  Examiner,  and  when  ready  lor  issue,  tho 
patents  will  be  granted  to  Edison  and  I’rcscott,”  etc. 
hereforo,  tbeso  cases  must  have  remained  in  Mr.  Wilber’s 
ossession  until  called  for  by  tho  Secretary’s  order,  ten 
ays  afterwards.  This  is  confirmed  by  tho  statement  ol 
io  case  in  Secretary  Chandler’s  decision  (Official  Qazetle, 
S,  403),  who  says,  “  After  a  full  hearing  of  the  parties, 
lie  (tho  Commissioner)  decided  in  favor  of  the  latter 
(Edison  and  Prescott),  and  thereupon  remanded  the  appli- 
cations  to  the  Principal  Examiner  for  further  proceedings, 
ill  accordance  icitli  the  practice  of  his  Office.  On  tho  2ilth 
of  tlio  same  month,  Harrington  presented  a  potition  to 
1  Hon.  0.  Delano,”  etc.,  etc. 

Finally,  wo  hnvo  tho  positive  stntoiuont  of  Ex-Commis- 
loner  Timelier  himself  (see  appendix  E,  post)  that  the  ap- 
ilicutions  were  all  remanded  to  Examiner  Wilber ;  that 
vlion  called  for  by  him  to  send  to  the  Secretary  of  tho  Jn- 
crior  they  were  brought  from  Examiner  Withers  room,  and 
hat  tboy  were  nt  that  time  properly  in  Ins  custody,  ilns 
s  again  continued  by  tho  statement  of  Mr.  Emory,  who, 
ipon  inquiry,  says  that  ‘'enscs  from  ill  to  100  wore  got  out 
‘  of  Wilber’s  room  by  him  to  tnko  to  tho  Secretary.” 

Thus  it  is  clearly  shown  that  Wilber’s  statement  about  the 
segregation  of  tho  eases  by  tlio  Commissioner,  prior  to  tho 
23d  of  March,  is  not  true.  The  latter,  as  tho  record  shows, 
received  no  orders  from  tho  Secrotary  until  tho  30th. 

.  3.  Wo  have  above  shown  that  Mr.  Prescott,  through  lilt 
counsol.  Messrs.  Porter,  Lowroy,  Soren  and  Stono,  oflleinUj 


notified  tlio  Commissioner  ol  Patents  ns  early  ns  Mnrcli 
27th,  that  ho  claimed  an  interest  in  applications  Nos.  11], 
112, 112,  on  the  ground  that  they  were  embraced  within  the 
scope  of  the  decision  of  March  20th,  nml  that  the  Commit- 
missioncr  thereupon  sent  for  Mr.  Wilber,  nml  ordered  him 
not  to  let  'any  of  Edison’s  enscs,  other  tlinn  automatic, 
go  out  until  31  r.  Prescott  lmd  nit  opportunity  lo  identic 
them.  It  was  subsequently  arranged  between  the  Com- 
•missioncr  and  Mr.  Quimby,  who  represented  3lr.  Prescott, 
that  the  models  referred  to  in  the  Edison. Prescott  agree 
incut  should  bu  identified  by  Gcogo  31.  Phelps,  .Tr.,  the 
gentleman  under  whoso  supervision  they  were  const ructcfl, 
Accordingly,  on  or  about  the  llltli  or  April,  187ii,  3Ir 
l’llelps  visited  Washington  in  company  with  Mr.  QuiniUy, 
inspected  tlio  models  in  the  Patent  Ofllce,  and  identified  that 
of  case  111,  among  others,  us  having  been  made  by  him.  The 
following  day  ho  executed  an  nllhlnvit  embodying  the  itlcnt 
ideations  of  the  models  of  cases  11 1  and  1 12,  which  aflhhivii 
ho  delivered  in  person  into  tho  hands  of  Mr.  Wilber.  (Foil 
sworn  evidence  of  this  action  see  appendix  B,  p.  IS  Wilbert 
Statement.)  Thus,  ovon  if  Mr.  Wilber  had  not  previously 
known  that  case  111  was  one  of  those  claimed  by  Mr.  Pres 
cott,  he  could  not  have  failed  to  bccoino  nivnro  of  it  whoi 
this  ntlidavit  was  placed  in  bis  liuiuls. 

lint  there  is  evidence  that  lie  must  have  known  it.  He  had 
already  examined  and  passed  ease  111.  Thu  model  belong 
ing  to  the  application  had  a  small  brass  plato  attached  to  it, 
bearing  the  inscription  “  Prescott  and  Edison,”  which 
could  hardly  have  escaped  bis  notice.  Ho  had,  farther 
more,  already  withdrawn  this  case  from  issuo,  pursuant  to 
n  positive  order  from  tho  Commissioner,  for  tho  very  pur¬ 
pose  of  this  identification. 

Mr.  Wilber  pretends  that  this  aflldnvit  of  identification 
never  was  filed  with  him.  Sir.  Phelps's  ovidonce  that  it  was 
so  filed  is  clear  and  omplmtic,  and  there  unn  bo  no  doabtol 
its  truth.  Is  it  reasonable  to  supposo  3Ir.  Phelps  would 
have  taken  tho  trouble  to  go  from  Now  York  to  Washing¬ 
ton  for  tho  express  purpose  of  identifying  theso  models, 
and  have  executed  such  nn  nilidavit,  nml  returned  without 
phioing  it  in  tlio  hands  of  souio  official  at  tho  Patent  Oflicot 
It  is  impossible  that3Ir.  Phelps  should  bo  mistaken  in  this 
matter.  His  testimony,  is  explicit,  ovon  to  tlio  very  words 
ho  used  when  he  delivered  the  paper  to  Mr.  Wilbor. 


But  oven  if  it  be  true,  as  Mr.  Wilber  asserts,  that  lio 
never  sawtliat  affidavit,  it  does  not  afford  him  one  particle 
of  justification  in  permitting  case  111  ’to  issue.  The  Com¬ 
missioner  had  ordered  him  not  to  issuo  it  until  Sir.  Prescott 
lmd  lmd  an  opportunity  to  identify  it.  This  order  was  never 

revolted,  countermanded,  or  superseded,  and  Mr.  Wilber  no¬ 
where  oven  nttompts  to  show  that  it  was. 

If,  as  ho  claims,  be  never  saw  tlmt  affidavit,  how  then 
could  ho  nssumo  to  determine  which  eases  lmd  been  iden¬ 
tified  by  3Ir.  Prescott  ns  cases  in  which  ho  was  interested, 
and  which  had  not  been  so  identified  I 
Mr;  Wilber  withheld  this  case  until  tlio  vory  day  that 
Commissioner.  Thacker's  term,  of  office  expired  (tho  Ooiu- 
.missionor  who  had  ordered  him  not- to  issue  it),  and  then 
allowed  it  to  issuo.  This  coincidence,  ho  explains,  arises 
from  tho  fact  thut  tho  final  fee  wns  paid  at  that  particular 
time.  But  tho  fact  thut  tho  fee  wns  paid  just  at  that 
particular  time,  by  order  ol' Ellison,  without  tho  kuowlcdgo 
of  Prescott,  is  ns  much  apart  of  tho  coincidence  as  any¬ 
thing  clso  is. 

•  In  tho  notes  appended  to  the  statement  and  bnet  ot  Mr. 
Wilber,  which  wo  have  liavo  had  printed  foi  tho  convcni- 
euce  of  tlio  Committco.-wo  have  carefully  sought  to  point 
out  tlio  misstatements  of  facts,  falso  promises,  sophistries, 
•and  the  manifold  other  devices  designed  by  him  to 
bofog  tho  case,  and  doceivo  the  Commission  appointed  to 
investigate  bis  acts  in  tho  matter  of  the  wrongful  issuo  of 
patents  Eos.  102,033  and  108^180  to  Edison  anil  Harrington, 
for  inventions  which  the  Commissioner  of  Patents  lmd  pre¬ 
viously  decided  were  legally  anil  of  record  in  .the  Patent 
OiUco  tlio  property  of  George  B.  Prescott  anil  Thomas  A. 
Edison;  and  wo  do  not  consider  it  necessary  to  ;  restate 
them  all  here.  But  wo  do  tbink  it  desirablo  to  place  before 
you  in  a  conoiso  form  the  more  ilagnuit:  instances  of  his 
misstatements,  together  with  a  reference  to.  tlio  .oil  emi 
records  and  other  proofs  which  dearly  demonstrate  then 
falsehood.  ^  ' ! \  1 :  * 

Oil  p» go  4  of  tlio  printed  copy  of  Mr.  Wllboi  h  statement 
•ho  save:  “The  title  to  some  of  Edison’s  inventions  being 
« tho  ‘subject  of  dispute,  I, was  determined  .that ,  all  .inter. 
'«  csted  should,  if  tiioy  choso  to,  know  what  lie  had. filed  m 
;« tho  office.  They  were  all  open  to  tho  inspection  oj  hoth.par 


. -’-v- 


“  lies,  so  time  if  tlioro  wns  anything  tlioroin  either  might 
“  clnim,  they  should  Imre  uotico  tlmt  such  was  in  tlio  office; 
“  and  talco  wlmt  action  they  chose.”  Again,  on  page  45  of 
his  nrgumout:  •<  It  should  bo  homo  in  mind,  in  this  conncc- 
“  tion,  that  all  parlies  had  official  notice  of  the  existence  of  Me 
“  cases  A  to  IT  nearly  three  months  before  the  issuance  of  IT; 
“  that  thoso  cases  were  open  to  their  inspection,  and  that 
“  no  notion  wns  taken,  no  claim  made  to  lend  any  ono  in 
“  this  oflico  to  suppose  that  Mr.  Prescott  wns  in  any  way 
“  interested  in  any  of  them.” 

Thoso  statements  are  utterly  untrue.  No  such  notice 
wns  over  given,  nor  wns  oven  tlio  slightest  intimation  ovci 
made  to  Mr.  Prescott  or  his  representatives  Hint  all  or  any 
of  Edison’s  cases  wore  open  to  such  inspection,  nor  has  Mr 
Wilber  brought  forward  the  slightest  proof  of  any  such  so 
tico  having  boon  given.  No  “olllcinl”  or  other  “  notice,’ 
was  given  to  Mr.  Prescott,  or  his  representatives,  of  the 
existence  of  ease  H,  “  nearly  tlirco  months,”  nor  three  sco 
omls  before  the  issunuco  of  tlio  patent  for  case  II.  licsidei 
this  the  ntnonded  application  in  case  II  wns  only  Died  in  tin 
Patent  Office  one  month  hud  four  days  before  its  issue,  ai 
tlio  records  show.  ‘J 

In  ordinary  cases  it  is  difliciilt  to  prove  n  negative,  ha 
in  this  instance  it  fortunntcly  happens  that  wo  are  able  ti 
do  so.  On  tlio  14th  of  May,  wliou  Mr.  Quiinby  had  oh 
tained  from  Mr.  Prescott  a  copy  of  tho  file  and  contents  o 
patent  No.  102,(133  [case  Tl],  and  during  an  interview  witl 
tho  Commissioner  of  Patents,  on  tlint  day,  asked  him  wh; 
Mr.  Prescott  or  his  attorneys  had  not  been  permitted  to  sci 
tho  application  in  case  H  before  tlio  patent  was  issued, ‘hi 
roplioil  that  Mr.:  Prescott  was  not  entitled  to  information 
from  tho  oflico  ns  to  nil  apxilicntions  of  Edison. 

In  order  to  manufacture  ovidoucc  to  prove  that  the  Com 
inissioucr’s  decision  of  March  20th,  1375,  did  not  inchld 
any  cases  otlior  thnn  thoso  numbered  04  to  100,  Mr.  Wil 
her  says  (page  4).  ! 

“  The  decision  mndo  by  tlm  Commissioner  was  npponlci 
“  front,  ‘'Thereupon  the  Commissioner  forwarded  to  the  Hoi 
“  Secretary  cases  01  to  100;  with  his  decision,  and  the  othe 
“papers  relating  thereto,- and  returned  to  me  all  the  other  casei 
“  including  tlio  'series  A  to  H;  111,  112,  and  113;  If,  in  hi 
“judgment,  any  of  these  had  also  been  embraced  within  hi 


«  decision,  lie  should  and  would  have  forwarded  them  to  tho 
a  Secretary;  but  by  this  segregation  lio  determined  what  wns 
“and .what  wns  not  embraced  within  his  decision.  And  I 
«  may  add  that  cases  04  to.  100  have  not  been  in  my  posses- 
“sion  since  tho  time  I  forwarded  them  to  tho  Commissioner  a 
a year  ago  this  month  [January,  1875],  while,  as  boforo  stated, 
«tho  remainder  were  returned  to  mo  to  take  their  places 

“among  my  ponding  eases.” 

Here  are  two  distinct  statements,  both  of  which  nro 
contradicted  by  the  official  records,  and  by  the  accompany¬ 
ing  letter  of  Ex-Commissioner  Timelier  [seo  Appendix  E] 
and  tho  statement  of  .1.  M.  Emery,  Esq.,  clork  m  clinrgo 
or  appeals.  The  Commissioner's  decision  of  Jlnroli  20th, 
“1875  (O.  G  VII,  423)  concludes  ns  follows.  “The  up- 
"plications  are  remanded  to  the  Principal  “  Examiner,”  etc. 
Secretary  Chandler,  in  his  decision  (O.  G.,  IX,  403),  says 
j  tlmt  after  tho  decision  was  made  tlio  Commissioner  *  there-. 

I  "  upon  remanded  the  applications  to  the  Principal  Examiner 
a  for  further  proceedings  in  accordance  with  tho  practice  of  Ins 
“  office  ”  Mr.  Wilber  acknowledges  that  tho  otlior  cases 
wore  returned  to  him,  ami  that  on  tho  23d  of  March  ho 
commenced  to  examine  them ;  but  tho  appeal  to  the .Secre¬ 
tary  ortho  Interior  was  not  umdo  until  tho  20th  of  March, 
and  it  was  not  until  tho  30th  Mnroh-toi  days  after  the  de¬ 
cision— tlmt  tho  Commissioner  wns  ordered  by  tho  Score- 
tary  to  transmit  to  him  cases  01  to  100.  (See  the  corre¬ 
spondence,  pp.  25,20,  appendix  to  WilbePs  statement  ) 
Where  wore  cases  04  to  100  from  the  23d  to  the  30th  of 
March  1  They  were  in  Wilber’s  hands,  as  tho  letters  of  Ex- 
Coininissiouer  Timelier  and  statement  of  Sir.  Emory dearly 

P1 To°snpport  the  theory  that  ho  did  not  know  that  case 
111  was  ono  of  thoso  embraced  in  tho  decision,  Mr.  Wilber 
is  obliged  to  deny  point  blank  that  1m  over  saw  Mr.  Phelps  s 
affidavit  identifying  the  models  in  tlio  case.  Ho  says:  I 
“understood  that  Mr. Phelps  wns  to  make  m.  affidadt, 
“  that  that  wns  Ids  object  in  looking  over  tlio  models.  E«f 
“  he  filed  no  such  affidavit  with  me.  If  ho  had  biought  to 
“  such  a  document,  knowing  him  to  bo  unaccustomed  to 
“  the  office  routine,  I  should  have  first  asked  him,  ns  is  ay 
“habit  in  such  cases,  if  belaid  l.nd  it  stamped  foriegnla 
“  filing.  But  I  cannot  remember  any  such  occurrences,  an 


‘  I  am  confident  tlmt  ho  is  mistaken  in  ills  recollection1  of 
I  wlmt  ho  did  with  it."  This  is  directly  contradicted  by 
lie  evidence  of  Mr.  Phelps,  givon  by  him  ill  person  befon 
ho  Commission  on  tlio  lltli  of  Juminry,  187(1,  anil  wliiol 
s  substantiated  by  his  sworn  statement  (printed  on  pngi 
18,  appendix  to  Wilber's  statement),  tlio  original  uiTIdnvit 
joing  forwarded  herewith. 

Again,  ns  nn  oxeuso  for  his  hurried  and  hasty  action  ii 
ssuing  easo  If  without  knowing,  ns  ho  claims,  wlmt  i 
.•enlly  contained,  ho  makes  tlio  statement  that  tlio  Comniii 
doner  “said  ho  laid  received  a  teiogmm  from  Mr.  Scrrol 
‘complaining  of  mg  delay  in  not  sending  forward  a  cos 

I  (enso  II),  which  had  boon  properly  nmonded  somo  week 

II  bofore.” 

Again,  on  pago  81  of  his  argument  ho  again  assorts  tlio 
this  hurried  examination  was  “  made  after  the  interne' 

11  with  tlio  Commissioner  on  tlio  day  of  tlio  passage  or  tli 
11  enso,  nn  interview’  incident  to  complaints  minlc  of  my  noi 
"  action  on  the  case.” 

By  reference  to  tlio  statement  of  Commissioner  Tlmchi 
(page  1C,  Wilber’s  statement),  it  will  bo  scon  that  ho  mnKi 
lio  reference  to  any  “ complaint.”  The  telegram  itself  (pa{ 

23,  fil'd)  is  simply  nn  inquiry,  and  not  in  any  senso  a  cot 
plaint.  It  simply  says:  “Please  advise  me  condition  ' 

“  caso  IT,  of  T.  A.  Edison,  filed  April,  ’73,  anil  amended  by’ 
“  himself.  Tf  ready,  please  issno  immediately,”  etc. 

To  clear  himself  from  tlio  proof  which  Mr.  Pope’s  oi 
deuce  affords  that  ho  well  know  the  scope  and  value  of  tl 
claim  which  Edison  had  inserted  by  amendinont  into  ca 
H,  Mr.  Wilber  is  again  obliged  to  resort  to  tlio  direct  contr 
diction  of  tlio  witness.  Tlio  original  niemnmmlum  widen. 
Mr.  Popo  lnndo  at  tlio  timo  is  submitted  ill  evidence,' 
together  with  his' sworn  affidavit  detailing  all  the  occur-1 
ranees  of  tlio  interview  with  great  minuteness.  It  will  be-- 
seen  that  Mr.  Pope’s  memorandum  corresponds  almost  word- 
for  word  with  tlio  claim  us  contained  in  tlio  patent  or  case'-: 
II,  although  liolind  no  knowledge  whatever  at  that  I iino't; 
of  any  of  tlio  cases  in  controversy.  Mr.  AVilbor  gives  in¬ 
version  of  his  statement  as  follows:  “My  statement  was?- 
"'•the  combination,  with  a  line,  of  ono  receiving  instrii- 
moat,  operated  by  changes  of  polarity,  irrespective  of- 
“  ‘  tension,  and  ono  receiving  instrument  operated  by1! 


changes  of  tension,  irrespective  of  polarity,  at  am 
the  fine  ;,  and  a  koy  changing  the  polarity  and 
changing  tlio  tension  at  the  other  end  of  the  line:  ’ 
This  differs  from  Mr.  Pope’s  version  by  being  mat 
icciilc,  with  tlio  evident  intention  of  producing 
ession  that  ho  had  in  his  mind  tlio  particular  a 
out  described  in  case  09.  Yet  ho  goes  on  to  say 
«t  breath:  “This  statement,  which  is  in  substa 
ono  I  did  make,  recto  a  comlanation  differing  ft 
thing  I  knew  of,  and  expresses  tlio  elements  and  n 
meats  necessary  to  accomplish  tlio  Hrst  stop  in  i 
plex,  viz.,  send  tlio  two  messnges  siimiltnncousli 
direction.” 

Ho  says  ho  knew  of  no  such  combination ;  yet 
tumbled-  caso  99,  anil  had  written  an  official  lotti 
ition.  thereto  on  December  31,  1874,  more  tlm 
loiitlis  prior  to  tlio  date  referred  to!  .In. view  of  t 
'helming  proofir  which  liavo  been  brought  forwan 
ntiro  falsehood  of  Mr.  AVilber’s  testimony  in  re 
thor  matters  of  fact,  what  importance  can  bo  attr 
is  denials'  of  the  statements  contained  in  tlio  affli 
Ir.  Popo  and  Mr.  Pholpsl 

On  pnge'14.  Mr.  AVilbor  makes  the  statement  t 
Icrrell  was  the  solicitor  in  the  cases  whoso  issue 
ilninod  of.  This  is  not  true  us  regards  case  IT,  as  tin 
if  the  caso  on  tlio  flics  of  the  office  will  prove;  i 
my  of  record,  other  than  Mann  &  Co.,  appearing  in 
lies. 

It- is  respectfully  submitted  that  tlio  evidence  i 
inve  brought  forward  of  tlio  wrongful  mid  imjiropc 
ir  Mr.  -AYilbor,  in  regard  to  tlio  two  oases  whose 
loinplaincd  of,  when  taken  in  connection  with 
ihown.by  tlio  official  records  of  tlio  enses  contain! 
Hies  of  tlio  office,. as  well  ns  Mr.  AVilboris  own  m 
mid  statements  in  relation  thereto,  fully  sustain  tli 
preferred  against  him  in'  Mr.  Prescott’s  lotter  to 
niissioncrof  Dccouibor  18th,  187f>,  and  conchisivcl 
slratos  his  entire  unfitness  to  occupy  tho  impoi 
rcsponsiblo  position  of  a  Principal  Examiner  in  tl 
States  Patent  Office.  Even  if  wo  tnko  tlio  most  i 
view  of  Mr.  AVilber’s  professed  inability  to  ilisoov 
semblance  bo'twoon  tho  subject-matter  of  caso  H,  i 


only  bo  excused  on  the  ground  of 
sequent  conduct  in  deceiving  tliu 
to  tiie  contents  of  ense  II,  in  nll< 
notice,  oitlicr  to  tho  Commissioner 
in  ease  !)9,  wlicn  lio  well  know,  i 
to  Jfr.  Tope  proves,  that  it  oonvo 
tlio  “point  of  value ”  in  ipini 
especially  in  issuing  case  111,  i 
obedience  of  tlio  orders  of  the  C< 
the  very  day  that  tlio  latter’s  t< 
dually  the  innumerable  sophistric 
oven  actual  misstatements  of  fact 
abounds,  somo  of  which  wo  hnvo 
all  tlicsc  facts  Icavo  no  question  v 
lias  grossly  abused  the  olllciul  poi 
ho  1ms  douo  this  m  pursuance  o 
for  tlio  uninistakalilo  purpose  of 
parties  who  wero  conspiring  toge 
cott  of  his  rigiits  in  these  invei 
odicial  liinlfcasnnce  on  tlio  part  of 
lias  been  subjected  to  a  vast  nmo 
convenience,  ns  well  as  great  pe 
all  the  facts,  it  is  respectfully  sub 
for  the  rights  of  the  public,  and 
Patent  Ofllce  itself,  imperatively  r 
Wilber  from  tlio  responsible  olllei 
holds. 


acity,  while  his  self 
nissioncr  in  respect 
it  to  issue  without 


teres ts  tlioreiu,  wider  certain  assignments  of  record  i 
o  Patent  Olllco,  and  that  a  certain  George  B.  Presco 
so  claims  to  hnvo  the  said  lottors  patent  issued  to  liiti 
ilfnnd  tho  said  Thomas  A.  Edison,  by  virtue  of  an  a 
guinea t  from  tho  said  Edison  to  tlio  said  Prescott,  also 
icord.  That  tho  decision  of  tlio  Commissioner  of  Patou 
is  bcon  rendered  directing  tho  issue  to  tlio  said  Presco 
id  Edison,  which  your  petitioner  respectfully  insists  wou 
d  contrary  to  equity  and  in  violation  of  tho  spirit  of  tl 
iw  in  such  cases  uindo  and  provided.  And  your  petition 
irtlicr  states  that  ho  is  prepared,  should  time  bo  ullowi 
ini  for  tho  purpose,  so  to  present  his  claim  as  to  provo 
■hat  ho  respectfully  insists  would  bo  doing  a  great  wroi 
l  tho  promises ;  and  forasmuch  as  your  orator  is  ndvis 
lint  under  tho  Act  of  Congress  in  this  connection,  t 
loiiiinissioaor  of  Patents  is,  in  tho  cxerciso  of  his  powi 
s  such,  subject  to  the  direction  of  tlio  Secretary  of  tho  J 
crior,  your  orator  prays  that  you  will  direct  tho  proccedin 
icrotoforo  laid  before  tho  Commissioner  of  Patents  m  tl 
egard  to  bo  transmitted  for  your  examination  and  rovisii 
o  the  end  that  tho  patent  may  bo  directed  to  bo  issued 
rour  petitioner  and  said  Edison. 

Jno.  XI.  B.  IjATitonu,  I  Of  Counsel , 

John  K.  Co  wen,  j  Petitioner 


'  Appendix 

Appeal  of  George  Harrington  to 


To  the  Honorahlo  the  Secretary  oft 
The  petition  of  George  Hnrrii: 
scuts  that  ho  claims  to  have 
dorstood  to-be  ready  to  bo  issu 
Thomas  A.  Edison,  tlio  inventor  < 
posed  to  bo  patented,  iu  the  prop 


'  Washington,  D.  0.,  March  30(/i,  187f 
Silt:  I  transmit,  herewith,  a  copy  of  a  petition  that 
been  presented  to  me,  iu  relation  to  tlio  issue  of  letters  ] 
cut  lor  alleged  Improvements  in  telegraphs,  ami,  agrees 
to  tho  prayer  thereof,  you  are  hereby  directed  to  transmi 
this  Department  tho  proceedings  ponding  before  you  m 
matter  of  tho  applications  of  Thomas  A.  Edison,  nssigi 
&c.,  niimbors  9-1,  05,  ill),  97,  98,  09  and  100,  for  letters  ] 
cut  for  alleged  improvements  iu  telegraphs,  for  examine 
and  revision. 


C(IH0  you  slinll  proceed  to  issuo  tlio  letters  pntcnt,  be 
my  examination  and  determination  of  tlio  questions 
ntod,  you  arc  requested  to  cull  my  pcrsonnl  attention 
)  fact  and  to  tlio  letters  patent,  to  tlio  end  Hint  I  may 
indrertcntly  sign  the  same. 

I  nni,  sir,  very  respectfully, 

Your  obedient  servant, 

0.  Delano, 


APPENDIX  0. 

Secretary  Delano’s  Decision. 

Washington,  D.  0.,  April  14,  1875.  J 
s  tlio  practice  of  tlio  department  to  sign  without  in- 
all  patents  tlint  aro  sent  up  from  the  Patent  Office 
ho  signature  of  tile  Commissioner  attached  before 
to  presented'.  As  far  as  I  know,  it  has  bceu  tlio  prae- 
the  Office  from  time  immemorial.  I  cannot  say  to  the 
horcol  the  memory  of  man  runneth  not  to  the  con- 
xc.  Jty  memory  only  dates  back  to  tlio  day  of  Sccro- 
ivmg.  The  records  or  the  department,  ns  has  been 
sorted  by  tlio  counsel,  show  that  applications  to  the 
"J  t°  withhold  his  signature  to  these  patents  have; 
iry  rare,  if  0no  hns  ever  been  made.  Nevertheless, 'I 
J  clearly  of  tlio  opinion  tlint  when  my  attention  is. 
to  tlio  facts  of  a  case,  mid  my  judgment  is  that  a  i 
should  not  be  issued,  it  would  bo  my  duty  to  withhold 
mturo  from  tlio  patent.  But  I  think  good  pmctico 
s  that  my  opinion  should  rest  upon  tlio  case  ns  pro-' 
to  tlio  Commissioner;'  and,  therefore,  I  should  no£ ; 
lien,  l  think,  under  any  circumstances,  to  direct  tlio  : 

,  .ol  0tl‘01'  evidence  than  that  which  was  before ' 
a miss'oner.  Certainly  in  this  case,  at  this  stage  of 
f  *?  wwwilling  to  give  ini  order  for  tlio  taking  of  ’ 
8  continuance,  as  tlio  counsel  upon  onesided 
2, <«'!•, Now,  as  to  whether  W .hy'judg^ 
rshall  notdeoni  it  niy  duty  upon  tlio  ease,  ns 


that  have  boon  submitted  to  day— cither  todi 
or  contiiiuo  it,  and  allow  additional  tcstimoi 
in  it  I  reeognizo  tlio  fnct  that  to  tlio  Count 
trusted,  in  tho  first  distance,  tlio  duty  of  o 
deciding  upon  all  questions  that  arise  bofo 
office,  and  are  presented  to  him ;  but  1  am  ui 
my  mind  to  tho  conclusion  that  it  would  bo  m, 
ir  patent,  because  in  his  best  judgment  lie  lint 
ho  issued,  if  I,  on  tho  evidence  in  tlio  case  m 
mo,  should  bo  of  tho  opinion  tlint  his  com 
dearly  and  distinctly  erroneous.  I  do  not 
ibout  what  I  should  do  in  a  doubtful  case.  1 
:o  express  any  opinion  at  present  in  any  otlie 
[  havo  used,  namely,  and  if  tho  facts  in  the 
looted  by  tlio  document  by  tlio  Commissioner 
aitisfy  mo  that  it  was  wrong  to  sign  tho  patei 
loultl  not  conscientiously  attach  mynanio  to  it 
osorvo  tho  expression  of  any  opinion  in  ref 
loiivictions  ns  to  whether  this  patent  should  i 
io  issued.  I  am  inclined  to  think,  that  in  no 
mdertako  re  direct  tho  Oommissioiior  ns  to  1 
codings,  nftor  I  hail  determined  to  withhold 
rom  a  patent  presented. 


Appendix  D. 

Letter  from  Qeo.  B.  Prescott  io  J.  jlf.  Thaclier 
sioncr  of  Patents. 

New  York,  Mar 

Ton.  J.  M.  Thaclier. 

Sir  :  In  your  decision  of  Mnroli  20, 1875,  on 
f  title  in  tlio  raattor  of  tho  applications  of 


,  xu.iuuvumunra  m  uupiox  Telegraphs,  you  C( 

imo  by  stating  that  u  tlio  applications  arc  remanded 
iio  Principal  Examiner,  and  when  ready  for  issue,  t 
ntents  will  bo  granted  to  Edison  mid  Prescott,  nssignt 
f  Edison.”  Will  you  please  inform  mo  whether  all  l 
III dications  in  tlicso  enses  wore,  in  foot,  remanded  to  J> 
minor  AVilbor,  in  nccordmico  with  your  decision,  and 
lioso  custody  they  wore  whon  culled  for  by  tlio  Secfctn 
r  tlio  Interior,  on  March '30,  lSTflt 


■tter  from  J-  M-  Timelier,  Ex-Cuinmmioncr  of  Vatents, 
George  11. Vreseott. 

Nkw  Yohk,  March  24th,  1870. 

:o.  B.  Brescoll,  Esq. 

S™ih'  r“!llj'to  y°"r  »0ta  of  this  date,  I  would  sta 
‘  *1,e  f?>j>cat,ons  Covered  bg  mg  decision  of  March  2 
, ™  W,IW,‘  y°n  refer,  mere  all  remanded  to  Examiner  IP 
rJT'J  fll*  : reguIar  comse>  «>°  opplications  we 
.  uj  mo  from  tlio  Commissioner's  room  to  the  Clci 
vmg  charge  of  all  appeals  to  tlm  Commissioner,  then,  i 
»,  iui.  Winery,  who,  I  suppose,  took  thorn  to  Mr.  Wilhei 

Whon  those  applications  woro  called  for  by  mo  in  ord< 

•porly  in  the  custody  of  the  Examiner,  Mr.  AVilbor. 

.  Ecspootfully  yours, 

J.  M.  XiiAonur 


BEFORE  A  COMMISSION 


COMMISSIONER  OF  PATENTS, 


Charges  preferred  by  GEORGE  B.  PRESCOTT  against 
'  Z.  F.  WILBER,  a  principal  Examiner  in  the  United 
Stales  Patent  Office..  ' 


STATEMENT'  AND  •  BRIEF^OF  :Z.  f.  .WILBER, 


NOTES 


EXPLANi 


ACCOMPANIED: 


GEORGE  B.  PRESCOTT,  XND  DOCUMENTARY 


support, 


and  Kb.  01  in  roforonco  to  F.  Part  of  112  was  also  rejected  on 
rofovonco  to  Edison’s  prior  patent  Eo.  ICO, 810.  ITnd  l  tlion 
thought  that  II  and  00  were  tlio  same,  I  should  have  pursued 
tho  same  course  in  relation  to  00.- 1 

Some  timo  in  January,  1875,  an  ordor  came  to  mo  to  send  up 
to  tho  Commissioner  cases  01  to  100.  I  was  afterwards  sont 
for  by  him,  and  instructed  to  read  tho  Harrington  and  Edison 
assignment  or  agreement,  and  roport  in  writing  tho  meaning  or 
scopo  of  tho  torm,  “  fast  systems,”  or  “  fast  telegraphy,”  and 
whothor  inventions  of  this  class  were  included  thereunder.  I 
made  tho  report.  Although  its  merits  or  demerits  lmvo  nothing 
whatever  to  do  with  tho  matter  in  issue,  it  has  boon  lugged  in 
with  some  would-be  sarcasm,  “as  illustrating  tho  temper  of 
“  mind  in  which  ho  approached  tho  subject.”  So,  in  soil' defense, 
it  may  bo  well  to  stato  tho  conclusion  arrived  at  in  tho  roport, 
and  tho  “why  thereof,”  “ns  illustrating  tho  actual’ temper,” 
otc.  Tho  Journal  of  tho  Telegraph  liml  The  Telegrapher  aro  the 
tico  leading  electrical  journals  in  this  country.  The  first ‘is -re¬ 
cognized  ns  tho  official  organ  of  tho  W.  U.  Tel.  Co.,  and  public 
opinion  gives  tho  control  of  its  editorial  columns  to  Mr.  Pres¬ 
cott,  assisted  by  Mr.  Grace.  Tho  second  was  generally 're¬ 
garded  as  rather  anti-W.  U. ;  was  and  still  is  published  by  Mr. 
Ashley,  a  business  associate  of  Mr.  Pope,  and,  until  some  time 
in  1874  (I  think)  Mr.  Popo’s  name  appeared  at  tho  bend  of- its 
columns  ns  associate  editor.' 

In  tlieso  papers  I  had  noticed  during  tho  fall  mid  suminci 
several  editorials  on  tho  subject  of  fast  telegraphy  which  were 
fresh  in  iny  mind.  Under  the  generic  caption  of  “  Fast  Sys- 
“toms,”  or  “Fast  Telegraphy,”  tho  species  “Duplex”  and 
“  Quadruples”  were  spokon  of.  I  remomber  ono,  whore  the 
quadruples  alone  hnd  been  discussed,  entitled  “-More  Startling 
“  Inventions  for  Rapid  Telegraphing.”  Another  (in  tho  Journal), 
with  tho  generic  title,  “  Fast  Systems  of  Telegraphy,”  discussed! 
ns  species  thereof,  tho  automatic,  multiplex,  duplex  ninl  mind' 


last  number  of  tho  Journal  of.  tho  Telegraph  ventilates 
ideas  of  ,  Messrs.  Prescott  and  Edison  on  the  subject  oj 
ni-  rnlninaubv  at  considerable  length.  * 


initio : whether  the  assignment'  from 
ilntcil  April  4t1i,  1871,  covers  thoso  inventions 
it  is  not  ncccs8nry  to  deternuno  whether  1 


returned  to  my  room,  wont  ovor  tlio  enso  (some- 
nml  sent  it  forward  tlmt  same  afternoon, 
dates  of  tlio  amendment  and  allowance  of  this 
ed  Now  York  on  business,  and  while  there  mcl 
o  had  quite  a  conversation,  tlio  occasion  for  ami 
as  an  application  mado  by  him  and  his  asso 
■issno  of  Klcctrie  liuilrond  Signnl  originally  pat 
Tlio  main  portion  of  tlio  talk  was  an  argument 
o  show  mo  that  I  was  wrong  in  iv  certain  posi- 
1  takon  in  treating  that  case.  Tlio  argument  he 
on,  was-  sulllcient  and  convincing,  that  if  lie 
tlio  enso  I  would  “back.”  ITo  said  ho  would 
of  it  for  Mr.  Livingston,  his  attorney,  to  flx 
My  impression  is  that  lie  did  take  somo  paper 
tstoifs  desk  (Mr.  Livingston  was  absent  ut  the 
iterviow  was  at  his  olllce),  and  made  a  minute 
o  courso  of  our  talk  lie  mentioned  that  lie  hnd 
jy  the  Western  Union  to  examine,  ns  an  expert, 
inventions.  Wo  hnd  somo  talk  thereon,  not  as 
stwecii  Prescott  and  Harrington,  but  ns  to  the 
i  dill'crcnt  inventors,  whoso  names  wero  there 
between  whom  an  interference  seemed  possible 
-•  .  Ho  asked  mo  wlioro  I  thought  tlioy  touched, 
linn.  I  hnd  considered  tlio  subject  somowlint 
md  compared  tlio  systems  of  these  inventors, 
vital  and  first  thing  to  bo  done  in  a  qnudruplex 
rniigomont  by  which  two  manages  could  bo  sent 
i  one  direction ,s*  that  this  being  done,  tlio  rccciv- 
could  bo  easily  duplexed  by  eitiier  the  diffeicn- 
steins,  the  result  would  then  be  a  qnudruplex. 
iruplexes  wero  old,  or  rather  that  arrangements 
messages  simultaneously  in  one  direction  were, 
stick  laid  been  suggested  having  one  receiver 
’  c  ““front  and  iinotlier  to  u  stronger'  cur¬ 
s’  thereof  being  immaterial :  that  others  (or  at 
icon  suggested  in  which  wore  used  rovorsnls  of 
rcaso  or  deereaso  of  tension  to  effect  the  object, 
latter  three  receiving  instruments  wero  used, 
;i*5'“i"  polarity  (ouo  +  and  one  -),  the 
d  lull  of  tension  (key  1  sending  a  +  current 
i,  and  key  2,  sending  a  —  current  to  iniiuonco 
i  tho  keys  woro  used  separately ;  when  used 


ml  novel'  been  officially  cancelled.  I  signed 
o  of  a  habit  I  liavo  in  such  eases,  simply  to  si 
tho  original  allowaneo  it  hail  boon  again  in 
lis  was  the  last  day  of  September,  and  tho  send 
gain  at  that  particular tiino  was  simply  because 
n  been  seat.  Said  fee  was  received  on  tho  - 
nit  day  it  had  been  called  for,  it  would  have  g 
to  days  beforo  “  tho  lato  Ooinmissioiior’s  tern 
d,”  instead  of  on  tho  very  day.  It  had  noth 
tho  fact  that  oil  that  day  “  tho  Into  Conn 
i  of  ollleo  expired."  .That  was  a  “  chops  anil  tom 
unstance  that  occurred.  I  nm  safe  in  saying 

ly  statement  of  tho  events  connected  with  til 

inns  my  own  testimony  thereon. 

a,  I  desire  to  call  your  attention  to  tho  record! 

l’o  tho  fact  that  Mr.  Serrcll  was  tlio  solicitor  l 

over  which  the  dispute  as  to  title  was,  anil  in 

issue  is  complained  of.3’ 

iter  of  Mr.  Timelier,  a  copy  of  which  is  liorou 

i  to  tho  orders  he  gavo  mo,  and  his  roincmbra 

fit  nnd  its  filing  or  rather  non-filing. 


PATENT  JiAW  A  SPECIALTY. 

(Office  of  Coburn  if;  Thachcr.) 

1100  ^  N.  E.  cor.  Clark  *  namlolph  St., 

CnioAGO,  III.,  Jan.  15th,  18 
Major  55.  F.  Wilber,  ■ 

Patent  Office,  Washington,  1).  0. 

^I  have  been  so  very  busy  ns  well  ns  absent  talcing  tcstii 
a  part  of  this  week  that  your  loiters  liavo  remained  i 
severed.  In  answer  to  your  inquiries,  I  will  state  tlia 
recollection  is  that  I  received  in  the  ordinary  way  some 
liuiiiicatiou  from  Mr.  Sorrell  in  relation  to  Edison  s  applic 
but  l  do  not  rcmoinbcr  whether  it  was  a  telegram  or  a  i 
I  think  that  I  sent  for  you  immediately  in  relation  to  the 
and  told  you  that  prior  instructions  ns  to  holding  applici 
of  Edison  related  only  to  such  ns  were  clearly  within  tho 
sion  I  had  rccontly  made  upon  tho  question  ot  title. 

In  reply  you  stated  that  tho  application  referred  to  b 
Serroll  could  not  possibly  bo  brought  under  tlio  opointi 
that  decision,  ns  it  wns  for  different  subject  matters,  am 
filed  a  long  tiino  before  the  applications  designated  in 
decision,  and,  ns  1  recollect,  beforo  tho  date  of  Edison  s  a 
mont  to  Prescott ;  although  I  am  not  positive  as  to 
limiting  this  last  statement.  . 

In  regard  to  tlio  other  question  about  the  Phelps  pate 
identifying  certain  models,  my  recollection  is,  that  Mr.  Qu 
upon  his  representation  that  Mr.  Phelps  made  the  mod 
Edison,  obtained  permission  from  mo  to  inspect  said  n 
with  Mr.  Phelps,  and  afterwards  showed  mo  an  affidiiut 
by  tho  lattor,  identifying  cortnin  models,  as  those  nlluii 
as  being  in  his  hands,  in  tho  assignment  ot  Edison  to  I  n 
I  cannot  say  positively  whether  I  saw  tins  aflldai 
whether  Mr.  Qnimby  merely  told  mo  Phelps  had  niado  i 
that  he  proposed  to  lilo  it;  neither  do  I  remember  that 
left  with  mo;  if  it  wns,  I  sent  it  out  to  tho  chief,  ns  us 
such  cases,  to  bo  sent  to  tho  proper  room,  winch,  in  tins 

*  I  hnvo  an  impression,  liowovor,  that  Mr.  Quimby  told 
day  or  two  afterward,  or  at  least  within  a  very  short  thru 
ho  did  not  file  tho  affidavit  in  question,  ns  ho  found  that 


[Appendix  A.] 

•iter  from  Messrs.  Porter,  Lowery,  So 
Commissioner  of  Patent 

New  Your 

on.  .T.  M.  Tiuoiier, 

Commissioner  of  Patents, 

Washington,  I).  0. 

Sir:  Wo  liavo  tlio  honor  to  notify  yon 
.  Prescott,  that  case  No.  1U,  by  Thonui 
10  inventions  specially  referred  to  and 
icnt  between' said  Edison  and  Proscoti 
574,  and  therein  referred  to  and  le  I 
whereas  the  said  Edison  lias  also  inv 
monts  in  duiilox  telegraphs,  tlio  descri 
been  lodged  witli  George  M.  Phelps  for 
being  constructed,  it  is  hereby  ngreed 
'  are  included  in  this  present  agnomen 
'applications  for  patents  are  made  tlio 
1  in  aceordaneo  herewith,  and  that  the  i 
1  the  required  papers  therefor.”  Wo  are 
b  about  to  issuo  in  caso  No.  111. 

We  suppose  it  to  be  inenmbent  upon  1 
,-our  Honor  by  proper  proofs  of  tlio  ido: 
.vitli  tlioso  described  ns  above  quoted.  '1 
jo  entirely  different  from  that  liiiulo  on 
lore  you,  to  which  Mr.  Harrington  was  r 
Wo  nro  directed  by  Mr.  Prescott  to  nsl 
for  a  hearing,  at  which  ho  will  place  in  ( 
models,  descriptions  and  other  papers,  b; 
that  the  ngreomeut  aforesaid  applies  to  i 
and  other  cases,  to  wit,  No.  112  and  113, 
eats,  tlio  numbers  of.  which  will  bo  forv 
or  two,  the  same  as  it  covers  the  cases 
upon  tlio  hearing  referred  to. 

Wo  will  also  at  that  time,  if  you  bn 
subject,  present  our  viows  upon  tlio  qu< 
and  obligation  to  reccivo  such  proofs, 
issuing  tlio  propor  patents. 

Wo  respectfully  request  that  you  wi 


your  decision  to  issuo  tliom  jointly  to  Thomas  A.  Eiliso: 
George  li.  Prescott  ns  assignees  of  Thomas  A.  Edison. 

Mr,  E.  E.  Quimliy,  if  in  Washington,  will  call  upon  y 
belinlf  of  Mr.  Prescott  to  arrange  for  the  hearing. 

Yours,  very  respectfully, 

PORTER,  IiOtVREY,  SOREN  &  ST< 


Affidavit  of  G.  M.  Phelts,  Jr. 

County  anil  Stale  of  New  York,  ss. 

Geobqe  M.  Phelps,  Jr.,  being  duly  sworn,  says:  Tin 
ing  tho  summer  and  autumn  of  1871,  certain  models  of  i 
and  quadruples  telegraph  apparatus  were  constructi 
Messrs.  Edison  &  Prescott,  under  the  immediate  cogn 
and  supervision  of  tho  deponent,  as  assistant  to  liis 
G.  M.  Phelps ;  that  about  April  10th,  1875,  tho  do; 
visited  tho  Patent  Oflico  in  Washington,  in  company  wi 
B.  E.  Quiinby,  and  was  there  authorized  by  the  Cominii 
of  Patents,  with  tho  knowledge  of  Exnmincr  Wilber,  to 
ino  a  largo  number  of  models  on  illo  in  tho  oflico,  for  tl 
poso  of  identifying  tlioso  made,  as  above,  for  Messrs.  Edi 
Prescott;  that  lie  identified  two  models,  marked  Case's  1 
112  respectively,  as  two  of  the  models  made  under  his  si 
sion  for  Messrs.  Edison  &  Prescott,  and  that  on  tho  day 
ing  tho  examination  of  tho  models,  ho  executed  an  al 
embodying  tlio  identification  of  tho  models  of  Cases  l: 
112,  which  affidavit  ho  delivered  in  person  into  tho  1m 
Exaininor  Wilber. 

Geobqe  M.  PnELrs 


[Appendix  C.] 

Sioorn  Statement  of  Frank  L.  Pope. 

HEW  Yobic,  Feb.  23,  1870. 

o  Edward  H.  Knight,  Esq., 

Chairman  of  Committee. 

Sir :  X  respectfully  bog  lcavo  to  submit  tlio  following  detailed 
itcmcnt  respecting  certain  conversations  between  Mr.  Wilber 
d  myself,  in  rofcrcnco  to  quadruples  telegraphic  inventions, 
liich  I  have  pnt  in  tho  form  of  an  affidavit  and  duly  sworn  to: 
ate  of  New  York,  City  and  County  of  New  York,  ss. 

Frank  L.  Porn,  being  duly  sworn,  deposes  and  says  as  follows : 
The  first  conversation  upon  this  subject  took  place  on  1 10 
tcruoon  of  the  7th  of  April,  1875,  at  tho  office  of  my  attorney, 
:r.  Livingston,  So.  7  Warren,  sheet,  Now  York.  Wo  went 
lore  at  my  suggestion,  for  tho  purpose  of  consulting  with  Mi. 
ivingston,  in  regard  to  a  certain  claim  embraced  m  an  appll- 
ition  of  mine  then  before  tho  Office  for  tho  re-issuo  of  a  patent 
i  electric  railroad  signals,  which  claim,  Mr.  Wilbei,  as  Ex- 
minor,  had  objected  to  on  the  ground  that  tho  combination 
"aimed  was  a  double  or  analogous,  use  of  a  known  arrange^ 
.out,  while  I  contended  that  this  was  not  the  ^Winlo 
railing  for  Mr.  Livingston  in  liis  outer  room  (ho  being  i  t  t  o 
lomont  eitlior  engaged  in  his  private  room  oi  empo 
bsent,  I  do  not  now  recollect  which),  X  discussed  with  Mr. 
Vilbortho  matter  of  tho  patentability  of  tlio  d'spn ited .  o In i. 
ify  own  impression  is  strong,  although  of  this  I  ca mo  sp^k 
vithabsoluto  certainty,  that  tho  conversation  was  led  to  turn 


wtli  absoluto  certainty,  wmc  wlw  v  ol 

■poll  tho  subject  of  qundruplox  inventions,  in  C°"S®T,0I‘C0 ol 
dr.  Wilber  making  use  of  an  illustration  in  «PP«*  « 
u'gumout,  in  substnneo  as  follows:  Supposo  a  p  f 

‘bo  asked  for  a  quadruples  apparatus,  consisting  merely  pf 
‘Stark’s  old  inotliod  of  simultaneous  doublo 
“tho  same  direction,  combined  with'  Stoarus’s  duplex;  that 
“would  bo  a  enso  of  doublo  or  analogous  use,  and  not  a 
It  imtanlnlilA  cninhinatioii  ”  That  Mr.  Wilber  usod  this  argu¬ 
ment  to  mo  on  one  occasion,  I  am  certain.  It  is>.ll0^> 
possible  that  it  might  iiavo  boon  at  an  tQ 

ington,  subsequent  to  tho  ono  iu  Now  York  no.  .  \ 

In  the  course  of  a  general  conversation  upon  the  vofeupte 
matter  which  ensued,  Mr.  Wilber,  in  aMWOiito  a  question  o^ 


“  cover  tho  point  of  value  in  quadruples  tclogrnphy  »  (I  believe 
tlmt  was  tlio  precise  expression  lie  used),  was  ns.follows:  -.a 

“Tho  combination  of  a  receiving  instrument  operated  by 
“positivo  and  negative  currents,  irrespective  of  changes  of 
“  tension ;  a  receiving  instrument  operated  by  [changes  of] 

“  tension,  irrespective  of  polarity ;  means  of  reversing  tho  pm 
“  larity,  and  means  of  increasing  [and  decreasing]  the  tension.’) 

At  my  request  ho  again  repeated  this  formula.  1  do  not 
now  recollect  whether  or  not  I  told  him  that  I  wished  to  mako 
a  memorandum  of  it,  but  I  know  that  I  did  inuko  such  a  memo¬ 
randum  at  tho  moment,  using  for  that  purposo  tlio  back  of  a 
folded  pieco  of  paper  taken  at  random  from  my  pocket,  and 
which  happened  to  bo  a  sheet  on  which  Dr.  Nicholson  lmd 
drawn  for  mo  a  diagram  ol  Ins  quadruples,  at  my  own  ollico, 
No.  3S  Aresey  street,  only  a  few  hours  before.  I  do  not  recollect 
that  I  lead  this  memorandum  to  Mr.  AVilber,  or  that  1  called 
his  attention  either  to  tlio  memorandum  itsolf  or  to  tlio  fact 
of  my  having  mado  it ;  and  although  I  am  very  ccrtnin  that  it 
was  mado  in  his  presence,  it  is  quite  possible  that  lie  may  not 
have  noticed  what  I  was  doing.  I  am,  however,  positivo  that 
I  have  given  abovo  almost  tho  exact  words  of  Mr.  AVilber 
descriptive  of  tho  point  of  value  in  tlio  quudruplcx  inventions, 
and  that  no  mention  was  mado  of  tho  receiving  instruments  ' 


being  at  one  end  of  the  lin 
recollection  is  distinct  that 
part  of  tho  combination,  as 
noting  it  down,  thinking  tl 
mention  it. 

One  of  my  principal  rens 
remember  this  combination, 


and  tho  keys  at  tho  other.  My 
he  line  was  not  mentioned  as  a 
1  hesitated  lor  a  moment  when 
it  perhaps  it  would  be  well  to 


One  of  my  principal  reasons  for  taking  so  much  pains  to 
remember  this  combination,  was  that  I  .wished  to  see  if  it  writ 
embraced  in  any  wny  in  Nicholson’s  invention,  tho  originality 
ot  which  he  had  employed  mo  to  investigate,  and  of  which  lio 
had  that  very  morning  given  mo  a  drawing. 

Mr.  AVilber  must  bo  in  error  in  stating  that  I  said  to  him  on 
that  occasion  that  I  “hail  been  employed  by  tlio  AVostcrn 
“Union  to  oxnmiuo  as  an  export  tho  qundruplex  invention:” 
because,  as  a  matter  of  fact,  I  laid  up  to  that  timo  been  employed 
by  them  exclusively  on  other  matters  having  no  relation  lo 
patents  or  now  inventions  of  any  kind.'  At  tho  date  of  this  inter- 
view  I  had  not  the  slightest  knowledge  of  tho  contents  or  any 
of  Edison  s  applications,  or  of  tlio  naturo  of  any  of  his  duplex 
or  quadruplet  iuvoutlous.  I  bad,  however,  on  tho  previous 


battery -in  plncoot  a  rucostno  m  ones  >•>  »— . -  . -- 

as  a  qundruplex,  such  a  modified  arrangement  would  consti- 
a to  a  dillcroiit  combination  or  different  invention.  I  tlion 
iskeil  him  if  tho  claims  in  patent  102,033  would  not  bo  a  bar  to 
ho  issuo  of  a  patont-  in  case  01),  to  which  lie  replied  that  lio 
bought  it  ought  not  to  be.  X  also  called  his  attention  to  tlio 
expression,  “in  tho  same  direction,”  which  occurs  in  tho  l'1  fi¬ 
nable  of  patent  102,033,  in  reference  to  which  lio  said  that  it 
was  by  an  overeiglit  on  his  part  that  tho  patent  lmd  been 
illowod  to  issno  with  this  expression  in  it,  and  that  it  should 
iithur  have  been  struck  out,  or  tlio  method  of  using  tho  appa¬ 
ratus  for  doublo  transmission  in  tho  saino  direction  sot  out  am. 
described  in  tho  specification.  Do  furthermore  expressed  lie 
opinion  that  tho  expression  referred  to,  being  unsupported 
by  anything  in  tho  specification,  could  not  alter  tho  scope  of  tho 
claims.  No  reference  was  mado  by  .either  of  us  to  tho  previous 
conversation  iu  Now  York.  My  impression  is  that  it  was  at 


this  interview  of  May  17tli  tlmt  X  mentioned  for  tlio  first  time 
to  Mr.  Wilber  tlmt  I  wns  employed  by  tlio  Western  Union  Com. 
puny  on  tlio  qnndrnplox  mutter,  giving  him  tlmt  ns  my  reason 
for  calling  upon  him  to  discuss  tlio  propriety  of  tlio  Issue  of  caso 
IT  with  the  amended  claims.  I  made  a  minuto  of  tlio  conversa¬ 
tion  reported  abovo  within  an  hour  or  two  after  its  occurrence, 
while  it  wns  fresh  hi  my  memory,  mid  bcliovo  it  to  bo  substan¬ 
tially  correct.  Frank  L.  Pope. 

Subscribed  and  sworn  to  boforo  mo,  1 
this  23d  day  of  February,  1870,  J 
William  Arkoux, 

Notary  Public, 

City  and  County  of  New  Yorl;. 

[Appendix  D.] 

Corresjiondence  between  Geo.  B.  Prescott,  Lemuel  W.  Seu-  . 
reel  anti  Munn  &  Co. 

New  York,  February  Uh,  1870. 

L.  W.  Serrell,  Esq. 

Pear  Sir:  Please  lmvo  tlio  kindness  to  inform  mo  if  you 
acted  as  the  attorney  for  Edison  or  Harrington  in  tlio  applica¬ 
tion  known  ns  ease  1J,  for  which  Letters  Patent',  No.  102,033 
wore  issued  April  27th,  1875,  and  in  which  Messrs.  Munn  & 
Co.  were  originally  employed  as  attorneys. 

Yours  respectfully, 

Georoe  B.  Presoott. 

LEMUEL  W.  SERRELL’S 

AMERICAN  AND  FOREIGN  PATENTS. 

110  axd  131  Nassau  Stheet, 

(l*.  o.  liox  loan.) 

New  York,  Feb.  Uh,  1870. 

Geo.  B.  Prescott,  Esq. 

Dear  Sir :  In  reply  to  your  favor  of  this  dato  I  bog  to  say 
that  I  did  not  act  as  attorney  for  either  Edison  or  Unrrington 
in  connection  with  caso  “  H.”  No  action  was  tnkeu  by  mo 
in  that  enso  at  all,  except  in  sending  on  the  balance  of  fee 
after  the  application  had  been  allowed. 

Yours  truly, 

Lemuel'W.  Serrell, 

Per  Walker. 


New  York,  February  8th,  1870.  ’ 
Lemuel  W.  Serrell,  Esq. 

Dear  Sir:  I  am  in  receipt  of  your  favor  of  tlio  7th  hist.,  in 
which  you  state  that  you  did  not  act  ns  attorney  for  either 
Edison  or  Harrington  in  connection  with  caso  “  H,”  and  that 
no  action  was  tnkon  by  you  in  that  caso  at  all,  except  in  send¬ 
ing  ou  tlio  bnlanco  of  fee  after  the  application  had  been  allowed. 

Tlio  reason  why  I  imulo  the  inquiry,  to  which  you  luado  the 
abovo  roply,  was  bccauso  Mr.  Wilber  states  that  on  tlio  21th  of 
April,  1S75,  tho  Commissioner  told  him  that 11  lie  had  received 
a  telegram  from  Mr.  Sorrell  complaining  of  my  (Wilber’s)  delay 
in  not  sending  forward  caso  H,  which  had  been  proporly 
amended  some  weeks  boforo.” 

Will  you  kindly  inform  mo  whether  you  sout  to  tho  Commis¬ 
sioner,  or  any  otlior  official  at  tho  Patent  Office,  a  tolcgram  or 
letter,  or  any  other  communication  on  tho  dato  mentioned,  or 
previously,  complaining  of  Mr.  Wilber’s  delay  in  not  sending 
forward  caso  H,  or  alluding  in  any  manner  to  case  H  ? 

Yours  truly, 

Geo.  B.  Prescott. 


LEMUEL  W.  SERRELL’S 
OlHcca  lor  Procuring 

AMERICAN  AND  FOREIGN  PATENTS. 

139  ash  121  Nassau  Stsect, 

(P.  O.  Box  4089.)  Kew  yomC)  Feb.  8th,  1870. 

Geo.  B.  Prescott,  Esq. 

Dear  Sir:  In  reply  to  your  favor  of  this  date,  I  state  tlmt 
under  dato  of  April  2-1, 1875,  tlio  following  telegram  was  sent 
from  my  offleo  at  request  of  Edison. 

“  Please  advise  mo  condition  of  case  H  o  T.  A.  Edi*>. ,  hod 
“April  sovcnty-tlircc,  and  amended  by  lnmsoli.  It trendy, 
“please  issue  immediately  and  charge  my  account  foi  final 
“fee,”  to  which  tho  reply  came,  “ Edison’s  case i  m  next  issue. 
“  Chandler  has  paid  final  fee.  Grhinoll,  Chief  Olork.. 

I  presume  this  will  give  tho  exact  information  desired,  ns 
comprises  iny  action  and  knowledge. 

Yours  truly, 

Lemuel  W.  Serrell. 


New  York,  February  Will,  1870 
Lemuel  W.  Serrell,  Esq. 

Dear  Sir :  Will  you  please  inform  mo  to  whom  tho  tclegn 
of  April  i,  1875,  containing  tho  following  words — “Plensoi 
“  v*so  nio  condition  of  Cuso  II.  ol  T.  A.  Edison,  filed  Ap 
“’seventy  three,  and  amended  by  himself.  If  rondy,  plci 
“issue  immediately  and  charge  my  account  for  final  i'co” — v 
addressed.  Also  by  whom  it  was  signed. 

Yours  truly, 

George  B.  Prescott 


Lemuel  w.  surrell’s 

Onicos  tor  Procuring 

AMERICAN  AND  FOREIGN  PATENTS. 

119  and  120  Nassau  Strekt, 

(P.  0.  Box  4089.) 

New  Yoitic,  February  lath,  1S70 

Geo.  B.  Prescott,  Esq. 

Dear  Sir :  Tho  telegram  concerning  which  yoiu-  letter  of'tl 
date  inquires,  was  directed  to  Commissioner  of  Patents  nml 
went  over  my  name. 

Tho  copy  of  this  telegram  in  my  olllco  is'  on  a  Franklin  ( 
blank.  I  cannot  tell  from  memory  whether  or  not  it  was  sign 
by  mo;  but,  as  I  was  not  in  town  that  date,  my  impression 
that  1  learned  of  wlmt  had  been  done  when  I  came  to  town  t 
following  Monday. 

Yours  truly, 

Lemuel  W.  Sebhell. 

New  Yoiuc,  February  8th,  187(1. 

Messrs.  Munn  &  Co. 

Ocntlemn:  Will  you  kindly  inform  mo  whether  patont  1 
102, M3,  dated  April  27th,  1870,  was  issued  through  your  fir 
31-  whether  yonr  power  of  attorney  had  been  revolted  by  1 
Edison  previously;  and  If  so,  at  what  timo  1 
’  Yours  tally, 

Geohoe  B.  Prescott. 


Office  of  tee  “  Scientific  American.”  ) 
.Patent  Office  Department,  [ 

■  No.  37  Park  Bow,  ) 

New  York,  February  nth,  1870. 
Mr.  George  B.  Prescott. 

Dear  Sir:  In  answer  to  your  enquiry  of  the  Stli  inst.,  wo 
would  state  that  our  power  of  attorney  in  tho  matter  of  the  ap¬ 
plication  upon  which  patent  No.  102,033,  dated  April  27,  1875, 
was  issued  was  never  revoked;  but.  the  specification  in  said 
patent  was  a  substitute  specification,  lllud  by  Mr.  Edison  over 
his  own  signature,  March  IS,  1875,  without  our  agency  or 
knowledge. 

Respectfully  yours, 

Munn  &  Co. 

Appendix  E. 

Appeal  of  Qeorge  Harrington  to  tho  Hon.- Secretary  of  tho  Interior. 

Washington,  D.  O.,  March  20th,  1875. 
To  tho  Honorable,  the  Secretary  of  the  Interior : 

;.  The  petition  of  George  Harrington  respectfully  represents 
that  ho  claims  to  have  certain  patents  now  understood  to  bo 
ready  to  bo  issued,  issued  to  himself  and  Thomas  A.  Edison, 
tho  inventor  of  the  improvement  proposed  to  bo  patented,  in 
the  proportion  of  tlicir  respective  interests  therein,  under  cer¬ 
tain  assignments  of  record  in  tho  Patent  Oilice,  and  that  a  cer¬ 
tain  Gcorgo  B.  Prescott  also  claims  to  have  tho  said  letters 
pntent  issued  to  himself  and  the  said  Thomas  A.  Edison,  by 
virtuo  of  an  assignment  from  the  said  Edison  to  the  said  Pres¬ 
cott,  nlso-of  record.  That  the  decision  of.tlio  Commissioner  ot 
Patents  has  been  rendered  directing  tho  issue  to  the  said  Pres¬ 
cott  arid  Edison,  which  your  petitioner  respectfully  insists  would 
ho  coutrnry  to  equity  and  in  violation  of  the  spirit  of  the  law 
in  such  cases  made  and  provided.  And  your  petitioner  lurihcr 
states  that  he  is  prepared,  should  timo  be  allowed  him  for  the 
purpose,  so  to  present  his  claim  as  to  prevent  wlmt  lie  respect¬ 
fully  insists  would  bo  doing  a  great  wrong  in  tho  promises;  nml 
forasmuch  ns  your  orator  is  advised  that  under  tho  Act  of  Con- 
gress  in  this  connection,  tho  Commissioner  of  Patents  is,  in  tho 
oxorciso  of  .bis  notvor.  ns  such,  subiect  to  the  direction  ol'  the 


idcring  now  the  various  statements 
,  (t)  made  ns  proof  of  tlio  identity, 
mcs  clash.  Tfor  instance,  Prescott  e 
s  of  changing  tlio  tension  shown 
ibed  in  tlio  specillcntions  of  the  pat< 
>n  of  a  currant  is  dependent  upon 
nee  of  tlio  liuttcry,  and  can  only  lio 
r  diminishing  the  number  of  cells  n 
.•e,  as  his  “only”  means  of  changing 
nd  not  in  IT,  ho  argues  that  tlio  cln 
Dnstnied  by  the  speciflcntion  of  9!) 
i  samor  'l'liia  lino  of  argiiuioiit  Mr. 
ivovor,  denying  in  oflect  that  tliere  i 
dishing  tliis  result,  saying,  “  tli 
gth  of  tlio  current  may  bo  prodnei 
creasing  and  decreasing  tlio  strengt 


tt  realized  tlio  t 
,  So,  to  give  tin 
{?oos  on  to' say, 
bilitv  of  sending 


Iii  case  H,  u  substantially  as  ami  for  tno 
».  i  a.' arranged  to  solid  two  in  opposite  direct i 
s  no  proof  •  whatever  - 'of  this  alleged  conncctioi 
;  in  fact,  every  reason,  ns  shown,  to  believe  tie 
licit  connection.  If  they  were  the  same,  how  c 
s  avoid  the  danger  of  raising  a  suspicion  of  th 
»e  successor  of  II,  and  was  intended  to  cnilmi 
nils  the  41  fundamental  principle,”  liow  carer 
ship  was  concealed,  and  how  skilfully  the  clan 
>  that  “ fundamental  principle”  ub  applied  to  s 
in  one  dircction.(tt)  It  will  bo  noticed  that  no 
ted  in  IK)  which  could  be  rejected  on  cnso  H. 
loth  series  of  applications,  and  could  lind  no 
ing  any  claims  in  90  on  case  II,  though  I  did  ti 
jeet  several  of  the  series  91  to  100  on  somo  of  tl 
'  Attention  is  specially  called  to  this  distinct 
e  two  cases,  that  their  claims  arc  entirely  disti 
iiiv  inventor  having  the  two  applications  pcndi 


of  tllOIII.  .  ; 

ovimi  admitting  tlio  statements  nmilu  ljy 
>f  “  fundnmcntql  principle,”  tliat.tlio  allow- 
itillable,  bntwns  tlio  tiling  indicated  to  lio 
■instances,  by  tlio  law  ami  facts,  anil  Unit 

i  caso.ll,  it  will  bo  seen  that  nmlcr  no  cir- 
idor  tlio  speeilio  grounds  of  the  charges, 
more  general  grounds,  arc  my  actions  oil 

charges  iii  relation  ,lo  caso  111 ,.  it  is  neees-, 
i  sliould  bo  proved—  ,  , 
wrs  tiled  in, this  oflieo,  showing  that  lit 
Mentions  in.  which  an  intorcsl  was  trails- 


irovcn,  no  action  of  niino  was  wrong, 
ipccillcally,  identified  in  the  Kilison  and 
it  could  only,  be , brought,  under  tlio  oporri- 
tyovidonco  that'  it  .was'  pile  of  the  cases 
f  which  ,  tlio  papers  were  in'  the  liniiilsof 
niiiifnctiiro  of  models. 
ilies  that  ho  examined  tlio  models  in  tliis 
models  of  111  and  112  as  tlio  models  of 
ml  that  lie  made  an  aflldhvit  to  that  fact, 

i  paper  of  no  common  importance.  It  was 
i  certain  rights  alleged  to  belong  to  Mr. 
go  the  otllee  with  a  knowledge  thereof  to 
To  .legally  do. this,  its  regular  tiling  in  and 
eo  were  necessary ;  it  must  in  these  cases, 
o-olllco.  records,  just  as  testimony  ninny 
lines  part  of  tlio  record.  Yet  with  all,  this 
;  to  the  paper  itself,  and  equally,  pith,' its 
tnteinent  tlmt  ho, handed  it  toiuo.is  all  the 
tiling.,  If  it  had  been  handed,  to  mo  I 
;  iii  ouo  of  tlio, (lies, concerned,  nnd  put  iu 
i-roferoneo  thereto.  It  is  not  in  either  of 

uUiisHoii  iii  regular  connio, 'about  llio  20th  of  May, 
of  Mil  Wltbor’a  oitmlnibto  inipurtbility  tor  tlio  ‘Brat 
to  .lt  In  any  doenniotit  rolalliig  to'  tlila  conlrovorey 
i  tlio  Commlsalonar,  upon  tlio  meaning  of  “  rnnt  lclo- 

"  of'niiy  klmll  still  loss  an  "ofllclnl  'notice.” In  point 
Dither,  by  Mr.  Prescott  or  tils'  ooiin'sol  until  It  mndo  iii 
i  of  tho  eoimsol  for  Kdison  anil  Harrington,  after  tho 


i  Mr.  Qnimby  says  that  within  a  fow  days  the; 
after  lie  received  it  from  tlio  Commissioner.  'To  hnrmoni 
Phelps  and  Qnimby  then,  .there  shouh il  h '«  uvitl lence  t that >  . 
Pnin  mission  or  received  it  "from  me.  to  there  any  butn  o 
dunce  1  No,  on  tlio  other  hand,  the  Commissioner  testifies  th 
he  does  not  remember  to  have  ever  had  the  paper  at  a  1 
oitteo  rnlcs  forbid  tlio  return  of  papers  tiled.  [s  it  h U  ) 
then  would  have  returned  so  important  a  paper  to  tlio  paitii 
csneciallv  preserving  no  record  ot  it  in  the  oilleoi  ^  hat  dr 
1,0  himself  say  on  this  point?  That  if  it  hml  been  handed  h> 
lie  would  lmvo  sent  it  to  tlio  Oliief  Clerk  ns  usual,”  to  ho  sc 
to  the  in  oner  1*00111.  So,  if  it  had  been  in  tlio  possession  o  t 
officer  from  *  whoni  Mr!  Q.iimby  reived  it  it  would  In, 
reached  me,  and  bo  now  in  the  Hie ol  eithoi  111  oi  . 

Hut  where  is  it!  Mr.  Qnimby  says  tin  gave  it, .witho 
mners  to  Messrs.  rortcr,  Lowrcy,  Sorcn  &  Stone,  in  u  no.se  p 
Son’”  it  still  roniniiis.  Thus  is  shown  the  oxtrcnio  impr 
ability  of  that  allidavit  having  ever  been  tiled  in  this  ,n 
Tlint  improbability  is  rendered  greater  by  o cr facts. -  U o 
i>iIPl, n  i-ho  testillcil  here,  and  who  nuido  tho  nllhlnv  it,  is 
the  M  r.  Phelps  tilluded  to  in  the  Kdison  &  Prescott  nssigiimt 
hut  the  son  thereof.  Then  the  affidavit  lie  made  s  onlj  sec  ^ 
ary  evidence,  mid*  legally  not  good,  the  nbsentes 
deuce  of  (he  Phelps  •  referred  to  in  the  nssif 
niiiiccuniitcd  foi*.  Mr.  Timelier  says,  1  lui  1 

“however,  that  Mr.  Qnimby  told  »  dnj  nr_t  o  It 
“  atlcnstwithin  iv  very  short  tunc,  Hint  ho  dul  not  flic >“ 

“  dnivlt  in  question,'  ns  lie  found  it  was  not  tho  JJ1-  J  1  “IJ.j  ■ 
“was  with  him  who  mndo  tho  models,  n  ^ 

“ either  rntlior  or  son,  l  do  not  remember  which- 
these  circumstances  together,  and  they  o  emlj  hIiow  t 
young  Mr.  Phelps  is  mistaken,  that  Hie  aniilniit  mi  s  t  i 
tiled  in  this  oflice,  and  tlioy  show  why  it  w ns  not  llh'  h 
and  why  it  is  in  possession  of  a  law  Arm  ml he» York  Utj 
did,  however,  receive  information  from  some  out ,  j  ‘  ' 
either  Mr.  Plielps  or  Mr.  Qiiimby,  that  112  and  118  had  bce1 
would  bo  properly  identified.  I  theicupoiisuapemjed  ^ 
cases;  and  have  retained  them, :  This  was  not  done lognH 
iii'  itiirsmiiicb'of  liny  "ini  thorlty  any  where  jn  Mio-ofljcei  “>i  tl 
in  lint  tn  Hits  ilav  so  far  nsl  cau  nseertmn,'  any  papeis  oi 
dimed  Med  in  tins  office  which,  would  warrant  the  ollleo  hj  i 
nig  those  eases  to  Kdison  nml  Pie  cott  jointly  Koi 
which  any  eoiu  t  would  regard  for  a  iiiouiei  t  f  tho  oases 
brought  before  such  court,  the  only  reason  lor  t  o  non  issm 
being  tlio  question  of  title,  lho  siispens  on  hns 
cfleetivo  only  through  tho  concurrence  the  rein.  ol  I  o  at  m 
prosecuting  the  ernes.  It  shows,  however,  that  I  v ins  dispc 
so  far  as  I  could,  to  proservo  any  equitable  lights  of  Mi.  i 
colt’s  when  informed  of  them.  .  ..  .  ,0  ' 

The  intrinsic  evidence  of  the  three  cases,  11  ,  1U 
'  in  support  of  my  actions  and  liupressious  is  veij  8  fc* 


It  will  bo  noticed  tlmt  I  have  considered  these  charges  (in 
both  cases)  ns  though  it  woro  pari tof  iny  bus '!?»“  |o  oxnmhio 
into  questions  of  title,  to  see  that  thcra  wero  no  eimflictiiig 
Horn  torT.  A.  Edison.  Tlieso  woro  tlio  Edison  applications  Nos.  04,  00,  00,  01, 
.00,00  mid  100.  1  got  from  lilra  tlio  impression  that  tholo  would  lio  othors  lo 
compote  s  sorlcs,  Including  both  differential  nnd  bridge  'lundrnploxos. 

On  January  SCtli,  1815,  Mr.  Sorroll  lllod  case  No.  Ulj  nnothor  one  of  tho 
. “sorics "  which  Mr.  Wilbor  liiul  got  "tho  Impression »  would  ho  completed  by 
tho  addition  ot  other  applications  for  similar  inventions,  “  including  both  dit- 
"forontlnl  nnd  hri-lgo  ipiadruploscs."  Acting  subsequently  upon  Hint  Im. 
"proBslon,"  Mr.  Wilbor  very  properly  sent  cuso  No.  Ill  to  tho  commissioner 
with  the  rest  ot  tlio  Horios  to  which  It  belonged.  '  .  ,  . 

On  January  29,  1870,'  Mr.  Wilbor,  in' bin  report  to  tho  Commissioner.  says: 
•|  Tho  assignment  to  Mr.  Prescott,  which  bus  been  endorsed  upon  tlio  tiles  of  cer¬ 
tain  or  these  ennos  (nil  excepting  No.  112)' won  raudo  August  10, 1811. '  In  enu- 
morallng  these  cnscs,  nt  the  head  ot  his  report,’  Wilber  omits  to  mention  cnscs  J  l 
nud  111,  although  lie  woll  know  Hint  tlio  nsslgnincnt  to  Prescott  covered  them  ns 
well  ns  tlio  others'  i  -  .  .  .  . 

Messrs.  Porter,  I-owroy,  Soron  ,t  Stone,  counsel  tor  Mr.  Prescott,  in  a 
tho  Commissioner  dated  March  20th,  1816  (cute  Appendix  A),  expressly  not, lied 
him  that  enso  111,  among  others,  wns  for  an  application  in  which  Mr.  1 Iroscott 
claimed  ea  Interest,  under  tho 

in  support  of  his  ctalm' might  bo  brought  forward,  nnd  roptesihig  that  tho  said 


interests;  in  fact,  tlmt  tins  question  of  title  wero  one  coining 
within  my  jurisdiction.  I  have  been- perfectly  willing  toilo 
this,  tlio  actions  in  tiio  eases  being  so  correct.  The  fact,  how- 

torost  was  convoyed  to  mo  liy  llm  assignment  ot  Thomas  A.  Edison,  ilntml  Aog. 
10th,  1874,  and  recorded  Aug.  20th,  1874,  Libor  It.  18,  ]i.  02,  Transfers  ot  Patents; 
together  with  a  digest  ot  tho  subject-matter  contained  in  certain  applications  for 

In  which,  by  virtue  of  tho  terms  of  said  assignment,  I  linro  also  on  interest. 


S  it  still,  nml  mny  (lo  wlint  .  bo.  pleases  with  it, .oven  though 
name  is  not  printed  thoroon.(33) 

i  conclusion,  1  tlosiro  tosolmimly  stnto  that,  in  my  nctions 
Imsc  mutters,  mid  in  other  complicated  matters  with  which 
ivo  had  to  deal,  I  liuvo  endeavored  to  not  fairly  mid  without 
ion al  bins  or  favor;  that  it  1ms  been  to  mo  personally  a 
ter  of  indilVereiico  which.  should  como  out  abend  in  tho 
tie  Fight.''  In  none  of  injunctions  on  the  cases  involved 
not  involved  in  that  contest  have  1  paid  the  slightest 
ml  to  tho  question  of  wlmt.  interests  would  he  bonelitcd  or 
red.  I  have  endeavored,  to  •iimiiitnin  friendly  relations 
i  both  sidos  and  to  entertain  no  hostility  to  either.  1  eer¬ 
ily  have  never  been  hostilo  to .  the1  interests  wliieli  it  is  now 
med  were  injured  by  tho  issue  of  these: patents. ....  If, I  hurt, 
a  I  certainly  should  not  have  so  readily  recoin  mended  tho 
dps  extensions,  or  granted  re-issues :  of  the.  Phelps,  tho 
ito  and  ltmidnll,  the  Stearns,  and  other  patents, all  of  which 
new  belonged  to  tho  Western  Union,  or  to  organizations 
trolled  in  fact  by  it,  and  which  re-issues  were  designed  in 
ry  instance  to  injure  tho  interests  of  people  I  wns  person- 


not  taken  such  things  into  a 
what  is  tho  right  thing  to  bo 
If,  in  tho  issue  or  theso  cn 
iii  liny  wny,  I  protest  it  has 
mine,  or  of  tho  Patent  Oil! 
such  injury  elsowhor?. 

Rcspeetfnll 


mentioned  re-issues.  In  fool,  furtli 
llio  abovo  mentioned  extensions;  ro 
li  the  Western  tbium,  or  lo  organ! 
re-issues  were  designed  in  every  inafu 
mu  personally  on  <jood  terms  with." 


ret  would  scoin  to  Indicnlo  Hint  ho  thought  tho  tillo  to  properly  in  homes  wns 
Si  by  tho  nnmc  or  Mimes  tho  grantor  lmd  inserted  ot  tho  head  of  llio  dcscrip- 
mid  ivritlon  in  tho  body  ot  tlio  cortlllc.Ho  of  llio  grant.  It  eerloinly  cannot 

ml  of  Ids  property  which  can  linvo  no  bash  other  than  nucli  li  holiof.  Tho 
bs  printed  there  sottlo  noquosllou  of  title.  If  tho  complainant  has  liy  law  any 
i,  tillo,  or  interest  In  tho  horse,  no  net  of  tho  defendant  can  iltvest  him  of  such 

id  in  tho  dood  of  conveyance  of  tho  liorao.  Tho  courts  stand  ready  to  protect 
anil  his  rights  iviil  bo  protected  by  thorn  as  fully  and  comploloty  ns  though 

I.— Tito  Commissioner  not  ouly  decided  Hint  llio  offleo  must  tnko  tho  legal  rcc- 
but  that  tho  legal  record  showed  that  the  inventions  bolongcd  to  Edison  anil 
icolt,  as  will  bo  soon  by  tliu  following  oxiract  front  tho  Commissioner's  decision  t 

ecutcd  tho  assignment  to  Prescott,  and.  ho  nlono  had  liio  right  to* convoy  any 
th  nil  duo  formality  when,  in  187-1,  ho  convoyed  an  entire  half  interest  In  tho 

liovo,  with  ported  certainty  that  If  tho  necessary  formalities  have  been  -ob- 
rvctl,  the  Commissioner  must  necessarily  order  the  patents  to  issue  to  Edison  and 
■escolt"  Wilber,  In  Issillug  tho  patents  to  Edison  and  Harrington,  thus  not 


Indicate  a  whirr  knowledge  of  tologn 
Unit  his  profound  InvesUgntlons  into 
nature  of  Ills  ofHco  do  not  provont  1 
all  that  is  pnsslng  in  tho  groat  worli 

Mr.  Wilber's  statement,  so  cni| 
to  tho  interests  which  it  Is  now  els 
cuts"  (for  eases  Hand  lit  to  Edi 
have  so  readily  recommended  the  Phi 
the  Foote  and  llandoll,  the  Stearns  in 
or  omclal  power  according  to  -perst 

Tho  recipients  of  tho  above  uicnl 
be  congratulated  iqion  llio  feet  thill 
but  wo  reel  sure  that  Ihoy,  os  well  l 

Issue  of  parents  strictly  iu  accordiu: 
without  reganl  to  pcnroual  or  other 


'  I 


giefoM  the  ®0wnu5siouet  of  fateuts. 

IN  TUE  MATTER 

The  Application  of  George  B,  Prescott  ami  Thomas 
A.  Edison  for  Letters  Patent,  dated  Autjwtt  imu, 
1874 :  opposed  by  George  Harrington,  by  Petition 
dated  January  23d,  1875. 


Argument  for  Mr.  Prescott. 


-4-:  - 


Matter 


The  Application's  of  Thomas  A. 
Edison  and  George  B.  Prescott, 
of  August  lOtli,  1874,  for  Let¬ 
ters  Patent  to  Tliomns  A.  Edi¬ 
son  and  George  B.  Prescott; 
opposed  by  George  Harrington, 
by  petition  dated  January  28d, 
1876. 


TnE  records  of  tho  Patent  Office  material  to  bo 
sidored  are : 


1st  Agreement— George  Harrington  and  Thomas  A. 
Edison,  dated  April  4tb,  1871,  recorded  May  Oth,  1871, 
Libor  U  18,  p.  412,  Transfers  of  Patents. 

2d.  Assignment — Thomas  A.  Edison  lo  George 
B.  Prescott,  dated  August  10th,  1874,  rreorded 


-a 


August  20tli,  1874,  Libor  .It  18,  p.  62,  Transfers  of 
Patents. 

8(1.  Various  specifications  in  the  applications  of  Edi¬ 
son,  Nos.  0-1,  05,  fid,  07,  08,  00,  100  ami  112. 

4th.  Power  of  attorney. — Thomas  A.  Kilson,  to  Jay 
Gould,  dated  January  0th,  1875,  recorded 
1875. 

5th.  Petition  of'  Gcorgo  Harrington,  January  28d, 
1875,  and  letter  of  Thomas  A  Edison  of  the  same 

A  portion  of  these  records  arc  printed  ns  an  appen¬ 
dix  to  these  points. 

On  the  10th  of  August,  1704,  Edison  assigned  (by 
sprcinl  reference  to  die  numbers  of  the  applications) 
one  undivided  half  interest  in  iho  whole  or  each  or  the 
inventions  described  in  the  specifications  attached  to 
the  above-named  applications,  with  special  stipula¬ 
tions  that  the  letters  patent,  when  granted,  should 
belong  to  tin  in  jointly  ;  and  rrrpu  sling  and  authorizing 
tho  Commissioner  of  Patents  to  issue  the  patents  to 
Edison  and  Prercotl,  jointly,  as  assignees  of  Edison. 

In  consideration  of  this  assignment  Prescott  pnid 
and  expended  a  large  sum  of  money. 

At,  and  subsequent  to,  this  dale,  Prescott  and  Edison 
were  in  treaty  with  the  Western  Union  Telegraph 
Company  for  the  sale  of  these  inventions,  and  on  tho 
10th  of  December,  Edison  received  $6,000,  on  account 
of  iho  purchase  from  that  company,  although  tho  price 
line!  not  been  definitely  fixed. 

On  the  80th  of  December,  Edison  and  Prescott  pro¬ 
posed  a  sum  as  full  compensation,  which  was  subse¬ 
quently,  and  before  any  withdrawal  of  the  ofl'er,  accept¬ 
ed  by  tho  company.. 


After  this  acceptance  it  was  learned  that  Edison 
had,  in  breach  of  his  contract,  given  tho  power  of  at¬ 
torney  to  Jay  Gould;  still  later,  Mr.  Prescott  was 
made  aware  of  the  application  of  Harrington,  and,  for 
the  first  time,  of  the  pretence  that  tho  Harrington 
agreement  uovered  tlioso  inventions. 

Mr.  Prescott  is  advised  that  the  original  application 
and  request,  by  Edison  stand,  and  cannot  bo  revoked 
by  him,  being  based  upon  consideration  paid. 

Tho  attention  of  his  Honor,  the  Commissioner  of 
Patents,  is  asked  to  the  following  general  propositions, 
which  arc  discussed  more  at  length  in  the  following 
points: 

1.  The  legal  title  to  one-lmlf  interest  in  the  inventions 
in  question  is  in  M.  Prescott,  and  therefore  all  pre¬ 
sumptions  arc  in  his  favor,  and  tho  entire  burden  is 
upon  anyone  who  seeks  to  impeach  that  title. 

2.  Mr.  .lliiiTingUm  must  show,  beyond  doubt,  that 
the  paper  on  which  lie  relies  has  taken  legal  effect 
upon  those  inventions.  If  tiny  doubt  remains  the 
legal  title  must  stand,  with  nil  the  incidents  attending 
it,  or  arising  out  of  the  contract  with  Edison,  to  wit: 
that  tho  patent  shall  bo'ltold  by  them  (li.  &  P.)  jointly, 
and  not  be  dealt  with  by  either,  except  as  permitted 
by  tho  terms  on  which  Prescott  accepted  tho  assign¬ 
ment,  and  parted  with  consideration. 

8.  Tho  agreement  of  Harrington  and  Edison  is 
not  by  its  terms  an  assignment  of  any  such  inventions 
as  these;  that,  even  wero  it  broad  onough  by  its  terms, 
still  it  cannot  alToct  these  specific  inventions  ns  nn  assign¬ 
ment,  because  nt  tho  date  of  its  delivery  these  inventions 
dul  not  exist,  and  could  uot,  therefore,  bo  assigned. 

4'.  Tho  inventions  in  question  being  improve¬ 
ments  upon  a  method  of  transmitting  telegraphic 


messages  known  ns  the 11  Duplex/  do  not  come  within 
the  terms  of  that  agreement,  winch  relates  solely  to 
an  ontirely  different  subject,  viz.:  “automatic  or  fast 
telegraphy." 

6.  That  this  ollico  being  without  the  powers  and 
functions  requisite  to  deoidc  questions  of  conflicting 
equities,  the  proper,  prudent,  and  just  conrsc  for  the 
Commissioner  is  to  issue  patents  to  thoso  possessing 
the  legal  title,  to  wit:  Edison  and  Prescott,  leaving  such 
persons  ns  may  think  they  have  equities  to  seek  their 
romodies  in  a  court  of  competent  jurisdiction. 


ono  half,  of  tho  whole  intorest,  and  to  make  and 
perform  a  contract  to  hold  the  other  halt  himself 
The  alternative  is  that  he  then  intended  to  practice 
false  pretences  and  commit  a  fraud.  Wo  do  nol 
charge  this,  and  we  presume  he  will  not  assert  it, 
/:!b  vi  termini  his  conveyance  implies  an  assurance 
that  he  had  not  previously  convoyed  two-thirds  tc 
Harrington. 

These  clear  implications,  from  his  nets,  sup, 
ported  by  his  positivo  averment,  cannot  be  dis¬ 
placed  by  a  subsequent  declaration  of  an  undo 
R mill  ■•nrrniinnn-iiimiivssi.lll."  lliado  Ulldcr  circUIlV 


— Wbntevor  else  may  badoubtful,l\vo  things  are  certain, 
viz.  (1.)  That  when  Edison  delivered  tho  assign¬ 
ment  to  Prescott,  ho  intended  to  transfer,  nud  sup¬ 
posed  that  he  did  transfer,  one-half  the  entire  in¬ 
terest  in  tho  specific  inventions  described  in  affi¬ 
davits  Nos.  91, 95, 90, 97,  95,  99, 100  and  112,  now 
in  question,  nud  (2.)  That  lie  did  not,  at  that  time, 
understand  that  ho  had  previously  transferred 
any  intorest  in  thoso  inventions. 

Tho  assignment  to  Prescott  is  not  of  one-hall 
Edison’s  intorest,  but  of  11  ono  undivided  half-part 
of  11  the  right,  title  and  interest,  of  every  character, 
in,  to,  and  under,  and  connected  with  the  aforemen¬ 
tioned  inventions,  and  letters  patent  oi  i 

granted,"  and  it  “authorizes  and  requests  tho  Com¬ 
missioner  of  Patents  to  issue  tho  said  lcltors  pa- 
tout  to  Thomas  A.  Edison  and  George  B.  Pres¬ 
cott,"  as  assignees,  &o. 

Thus  it  is  made  clear  that,  notwithstanding  tho 
agreement  with  Harrington,  Edison  understood 
himself  to  bo  the  owner  of.  and  free  to  convav  tho 


II.— Wlion  tho  assignment  to  Prescott  was  made, 
nearly  Tour  years  after  the  date  or  Hint  to  Har- 
ringtou,  inventions  had  ken  made  and  completed, 
ami  wore  in  form  to  be  definitely  desoribod  and 
identified.  Tlio  inohonto  right  to  a  monopoly, 
whioli  tlio  iuvontor  then  for  tbo  first  time  nenuir- 


ed,  was  propel  ty  capable  of  being  the  subject  of 
bargain  and  sale,  and  the  words  used  in  the  assign¬ 
ment  to  Prescott  were  apt  words  to  effect,  and  did 
efl'eot  quoad  hoc  a  transfer  of  that  inchoate  right, 
“Tlio  itiacnmcr  of  o  new  mul  useful  invention  In  vratn]  by 

tlio  law  rcqilirPM,  mul  Fitrgcmhl  |(o.«h>hsciI  tills  Inelionto  right  at 
ilio  tlmo  of  tlio  nHHlgnmcnt.  Tho  discovery  lind  lieon  made,  anil 

tlio  Inngimgo  of  I  lio  assign  men  t  tlmt  it  wn»  intended  to  operate 
i«l»on  tho  jierfccl  legal  titto  wliich  Fitzgerald  tlicn  lind  a  lawful 

•uresis  which  lie  actually  possessed.  Tlio  assignment  requests 
tlio  party  lias  acquired  'an  inelionto  right  to  it,  and  tho  power  to 

meat  of  his  whole  Interest,  wholher  oxccutcri  before  or  after  tho 
patent  issued,  Is  equally  within  tho  provisions  of  tlio  Mi  of 

From  tli is  authority,  if  authority  was  needed,  It 
is  clear  that  two  things  only  aro  contemplated  by 
the  patent  laws  ns  subject  to  bargain  nnd  sale. 
— 1st,  Tlio  inchoate  right  to  obtain  a  patent  (wliich 
right  docs  not  exist  until  an  invention  or  dis¬ 
covery  lias  been  made  sufficiently  complotc  to  bo 
described),  and,  2d,  llie  letters  patent  them¬ 
selves.  It  also  appears  that  a  valid  assignment  of 
the  inelionto  right  transfers  the  right  in  tlio  patent 
ivlicn  obtained. 

What  right  touching  tlicso  inventions  did 
Edison  possess  at  tlio  dnlo  of  tlio  assignment  to 
Harrington  ?  The  right  to  m alee  these  inven- 
ions,  if  lie  could,  and  no  more.  Tlmt  being  tlio 
inly  right  lie  possessed,  ho  could  transfer  no 
itlicr  to  Harrington.  Ho  did  not,  therefore, 
rnnsfor  then  any  right  touching  them ;  nnd,  being 
till  possessed  of  all  the  rights  lie  ever  lmd  to 
hem,  on  August  19, 1874,  ho  transferred  an  inter- 
iBt  to  Prescott,  who  took  immediately  a  legal  title 


to  bo  ft  bnlf  owner  in  the  letters  potent,  wliou 

As  was  said  by  the  Supremo  Court,  in  Gay- 
lor  v.  Wilder,  “it  appears  by  the  language  of  tlie 
assignment  llmt  it  was  intended  to  operate  upon 
(lie  perfect  legal  title  which  Fitzgerald  (Edison) 
then  had  a  lawful  right  to  obtain,  ns  well  ns  upon 
the  imperfect  and  inchoate  interest  which  he  actual¬ 
ly  possessed.” 


r. — It  being  equally  indisputable  that  the  legal  right 
is  in  Prescott,  and  llmt  the  Patent  Oflicc  is  not 
equipped  to  exercise  equitable  jurisdiction,  or  to 
measure  conflicting  equities,  it  is  submitted  con¬ 
fidently  that  the  Commissioner  must  bo  guided  by 
tlinl  fundamental  principle  of  our  jurisprudence 
which  gives  possession  under  the  legal  title,  leav¬ 
ing  equitable  claimants  to  contest  their  rights  ns 
plaintiffs.  If  Harrington  1ms  any  interest,  of  which 
the  law  can  lake  notice,  his  proper  forum  is  in 
the  courts.  There  are  numerous  reasons  why 
prudence  anil  impartiality  require  that  the  patent 
should  bo  issued  to  Edison  and  Prescott,  in  whoso 
joint  custody  (in  view  of  their  contract  on  record, 
forbidding  either  to  licence  or  sell  without  the  con¬ 
sent  of  tho  other,  and  of  the  known  conflict  of  in¬ 
terest  between  them  which  prevents  any  clinnco 
of  collusion),  they  would  be  safely  held  to  an¬ 
swer  the  claims  of  Harrington  or  whoever  else 
may  bo  interested.  On  tho  contrary,  being  issued 
to  Edison  and  Harrington,  nr  to  Edison  alone, 
very  embarrassing  questions  might  arise  in  re¬ 
spect  to  licenses,  assignments  or  grants  clandes¬ 
tinely  made  by  them,  or  by  Mr.  Edison’s  attorney, 
Mr.  Jay  Gould,  These  considerations  will  bo 
discussed  more  fully  under  another  point. 


V- — So  far  wo  have,  for  argument’s  sake,  treated  the  as¬ 
signment  to  Harrington  as  if  it  might  bo  construed 
so  ns  to  have  reference  to  tho  inventions  in  question. 
Such  is  not  tho  fair  construction  of  that  instru¬ 
ment.  Tho  languago  nindo  uso  of  is  wholly  in¬ 
applicable  to  theso  inventions  cxcopt  by  violent 
perversion.  Moreover,  the  instrument  does  not 
purport  to  assign  future  improvements  upon  any¬ 
thing  oxccpt  what  is  there  numod  as  “Automatic 
Telegraphy  Mechanical  Printers." 

That  assigr.mcut  recites  (us  matter  of  fact)  that 
Edison  did  (at  somo  former  timo)  ngroo  to  invent 
and  construct  *  *  *  full  and  complete  sots  of 
instruments  and  machinery,  that  should  *  * 

develop  into  practical  uso  tho  Lillie,  or  other  sys¬ 
tem  of  automatic  or  fast  system  of  telegraphy, 
and  subsequently  to  iinprovo  and  perfect  such  in¬ 
struments  and  machinery  by  adding  thereto,  from 
time  to  time,  such  further  inventions  as  oxperionoo 
should  demand,  and  my  ability  as  nil  inventor  and 
electrician  might  suggest;  *  *  #  il10  said  in¬ 
vention  and  improvements  to  be  tho  joint  property 
of  said  Harrington  and  myself”  *  *  *  . 

Having  thus  recited  a  former  promise  to  make 
certain  inventions  (if  possible),  tho  instrument  pro¬ 
ceeds  to  deal  in  presenti  with  matters  then  in  ex¬ 
istence,  under  the  designation  of  “said  inven¬ 
tions,’’  os  follows : 

“Now,1  therefore,  bo  it  known  *  *  *  I,  Thomas 
A.  Edison,  do  *  *  *  hcroby  assign,  sot  over  and 
convey  to  him,  said  Harrington,  two-thirds,  in 
interest,  of  all  my  said  inventions,  including  therein 
all  my  inventions  of  mechanical  or  copying  printers, 
and  of  all  tho  patents  for  all  such  inventions  and 
printers,  whether  already  issued,  applied  for,  or 
to 'be  hereafter  appliod  for,  and  of  all  and  what¬ 
soever  of  my  inventions  and  improvements,  made 
or  to  bo  made,  that  are  or  may  he  applicable  to 
automatic  telegraphy  mechanical  printers."  ' 


This  is  the  substance  of  tlmt  part  of  the  paper 
licit  operates  ns  a  conveyance.  It  will  bo  seen 
at  its  lnngungo  is  appropriate  for  a  enso  in  which 
volitions  had  already  hem  made,  in  pursuance  of 
oh  a  prior  arrangement  us  is  described  in  the 
aitnl  elnuso ;  anil  its  lnngungo  is  npt  for  the 
ftnnt  conveyance  of  such  existing  inventions, 
ilh  the  addition  of  a  stipulation  to  convey,  in 
lure,  certain  other  specified  improvements,  to  wit : 
improvements  made  or  to  bo  made  that  are  or 
ay  be  applicable  to  automatic  telegraphy  me- 
innicnl  printers." 

Upon  this  paper,  ns  it  rends,  Ilnrrington  could 
at  justly  claim  from  lidisou  an  interest  in  any 
ivention  notcomplete  at  the  limbing  of  the  agree- 
iOnt,  except  inventions  relating  to  the  mechanical 
rimers  used  in  automatic  telegraphy.  It  will 
iso  bo  seen  that  the  whole  contract  is  limited  to 
tber  the  “  Little  "  system,  or  any  other  system  of 
ntomntic  or  fast  telegraphy ,  and  to  certain  printers 
seful  in  that  system  or  telegraphy ;  which  printers 
re  by  a  phrase  which  perfectly  distinguishes 
nem,  called  “Automatic  telegraphy  mechanical 
rimers.” 

It  is  understood  that  Harrington’s  clniiii  is  based 
olely  upon  a  rending,  or  rather  misreading,  of  these 
vords  :  “  Littlo's  system,  or  other  system  of  auto- 
natio  or  fast  telegraphy,"  which  distributes  them 
nto  tlirco  groups,  representing  three  different  sys- 
ems  (instead  of  one),  which  may  stand  and  be 
jpernted  independently  of  each  other,  namely : 

(1.)  The  Little  systom. 

(2.)  Automatic  systom. 

(8.)  Other  fast  systom. 

Those  terms  must  have  a  reasonable  construc¬ 
tion.  The  object  of  tho  construction  is  to  ascer¬ 
tain  the  meaning  of  the  parties  at  the  lime  they 
made  use  of  the  terms. 

In  1871  the  term  "Automatic  or  fast  telegraphy” 
had  already  taken  a  firm  hold  in  the  literature  of 


the  telegraph,  and  had  extended  into  common  ui 
but  at  that  timo  it  is  helioved  that  the  term  “  I 
plox"  was  ouliruly  unknown,  at  least  outaido 
the  Patent  Ollicc,  and  that  tho  term  11  Omul 


tem.  The  Morse  system,  aided  by  tlio  duplex  or 
qnadruplex  instruments,  is  a  “  fast  system”,  pro- 
oisoly  ns  a  railroad  train  running  at  a  uniform  rate 
of  speed  is  mado  faster  or  slower,  according  to  tlio 
number  of  cars  it  contains,  or  lire  number  of  pas¬ 
sengers  it  transports. 

If  tlio  Erio  canal  sliould  bo  widened  so  as  to 
accommodate  ten  boats  abreast  would  it  be  a 
faster  mode  of  travel  than  now  ?  Is  n  horse-race, 
in  which  ten  horses  run  the  course  together  in  ten 
minutes,  faster  than  a  race  over  the  snme  course 
which  is  run  by  another  and  fleeter  horse  in  two 
minutes? 

It  seems  that  counsel  ought  not  to  bo  called 
upon  to  discuss,  nor  required  to  occupy  the  atten¬ 
tion  of  the  Commissioner  with  tlio  hearing  of  ar¬ 
guments  upon,  n  point  so  palpable  as  this. 

The  following  extended  extracts  from  public 
journals  and  books  relating  to  “  fast "  telegraphy, 
and  tlio  various  forms  of  the  multiple  method,  as 
well  as  from  the  contracts  of  Harrington  himself, 
make  a  demonstration  as  utterly  conclusive  as  is 
possible  upoir  any  question,  that  the  term  “  fast 
telegraphy  ”  is  a"  synonym  for,  and  by  common 
acceptation  includes  and  is  limited  to,  “Automatic 
telegraphy."  'l'lio  term  “fast"  is  evidently  «  <?«• 
scriptive  epithet  intended,  hy  its  universal  asso¬ 
ciation  with  the  appropriate  scientific  lam  “ Auto¬ 
matic to  emphasize  what  its  friaids  consider  the 
distinctive  men t  of  the  Automatic  system. 

So  oxtonded  lias  been  this  use  of  tlio  worn 
“  fast,"  and  so  complclo  the  ncquicsccnoe  of  the 
newspapers  and  tlio  public,  that  if  it  were  a  case 
of  trade-mark,  under  the  common  law,  the  owners 


THE  AUTOMATIC  OK  EAST  SYSTEM. 


Bain’s  New  System. 

“  Aflor  the  holes  nro  made,  the  machine  will  transmit 
from  600  to  1,000  impressions  in  a  minute." 


Yol.  4  of  Henry  O’Reilly’s  Scrap  Book,  at  the  library 
of  the  New  York  Historical  Society,  contains  tlio 
accompanying  extract  from  the  Rochester  Daily 
American,  March  22,  1848. 

“Mr.  Bain  is  the  inventor  of  three  instruments,  all 
of  which  Mr.  O’Reilly  has  tlio  light  of  using  in  this 
country.  One  of  these,  the  “fast  instrument,"  is  capa¬ 
ble  of  transmitting  in  an  hour  a  communication  that 
would  fill  eight  or  ten  columns  of  an  ordinary  sized 
newspaper. 

Tlio  same  paper,  in  an  editorial  of  December  6, 1848, 
calls  it  “  Bain’s  rapid  telegraph,”  and  in  another  plaeo 
“  Bain’s  rapid  mode.” 


From  the  Abbo  Moigno’s  description  of  Bain’s  Auto¬ 
matic  Chemical  Telegraph.  Bulletin  de  la  Society 
d.' Encouragement  pour  V Industrie  Rationale,  May  8, 
1860,  p.  286*  The  Electro  Telegraph,  By  Lau¬ 
rence  Turnbull,  Philadelphia,  1868. 


rolls  itself  with  extreme  rapidity;  tho  plate,  drawn  by  a 
olock-liko  movement,  turns  also  with  great  quickness. 
At  45  seconds  the  1,200  letters  composing  this  page 
appear  very  neatly  drawn  on  the  disks  of  tho  chemical 
paper,  and  were  thus  faithfully  reproduced,  and  would 
have  gone  two  or  three  hundred  leagues  farther  with¬ 
out  any  difficulty.  ***** 

“  These  are  the  advantages  which  the  author  attrib- 
utes  to  Ids  system  of  electro  chemical  telegraph  :  1st. 
More  economy  and  simplicity  in  the  primitive  con¬ 
struction  ;  2d.  Mure  rapidity  in  the  transmission  of  the 
dispatches ;  a  single  wire  with  a  go.  d  insulator  can 
transmit  1,200  letters  a  minute,  or  twenty  letters  a 
second,  that  is,  ten  times  more  than  is  customary." 


From  The  lileclro-Magnetic  Teleyruph.  By  Laurence 
Turnbull:  Philadelphia,  1853,  page  Si). 

Bain’s  Electro-chemical  Telegraph.  *  *  * 

“Transmitted  through  groups  of  perforations,  forming 
signs,  which  are  recorded  at  the  receiving  station  by 
pulsations  of  the  clcctiie  current  acting  on  chemically 
prepared  paper  *  *  »  theieby  effecting 

the  transmission  of  a  communication  to  one  or  a  plurality 
of  distant  receiving  stations  with  far  greater  rapidity  than 
by  any  other  mode.” 


Bccords  of  the  Directors  of  the  American  Tolegrnph 
Company,  March  1,  1861. 

“  Humaston  Invention,  Col.  Leffems. 

"An  opposition  tolegrnph  lino  between  Boston  and 
"Washington  is  proposed  to  bo  put  up,  of  which  Col. 
M.  Lefferts  is  tho  head.  Ho  proposes  to  use  a  fast 
system,  an  improvement  on  tho  Bain  principle." 


16- 


From  The  JSlectrie  Telegraph.  By  Robert  Sabine: 
London,  1867,  p.  166. 

•  Wheatstone’s  Automatic  Telegraph  :  “  This  excellent 
method  is  said  to  combine  tho  advantages  of  a  five¬ 
fold  sjiecd  in  transmission,  with  a  considerably  grentcr 
security  for  correctness  and  legibility." 


From  The  Kleclric  Telegraph.  By  Robert  Sabine :  Lon¬ 
don,  1867,  p.  178. 

Bain’s  Chemical  Telegraph. 

“The  entire  message  (282  words)  was  written  in  full 
in  the  presence  of  the  committee,  each  word  being 
spelled  completely  and  without  abridgment,  in  fifty- 
two  seconds,  being  at  the  average  rate  of  five  words  and 
four-tenths  per  second  *  *  *  a  distance  of 

upwards  of  a  thousand  miles  at  the  rate  of  10,600  words 
per  hour." 


Automatic  Telegraphy.  By  Alex.  Bain.  The  Tele¬ 
grapher,  vol.  iv.,  p.  129,  Dec.  14,  1867. 

“  Automatic  telogrnphy  consists  of  methods  of  trans¬ 
mitting  and  receiving  previously  composed  messages 
between  distant  places  by  menus  of  self-acting  machin¬ 
ery,  in  connection  with  electric  currents,  and  where 
properly  carried  out,  it  is  distinguished  from  common 
telegraphy  by  the  great  celerity  with  which  messages  can  be 
sent  and  received,  ns  well  as  by  tho  great  accuracy  it 
insures  in  its  transmission  and  reception  of  intelli¬ 
gence. 


From  The  Telegrapher,  vol.  iv.,  p.  273,  April  18, 1868. 
Wheatstone’s  Automatic  Telegraph. 

“This  instrument  is  now  being  worked  with  much. 


success  1) y  tuo  Elcctrio  Telegraph  Company,  and  the 
rale  of  speed  attained  by  its  use  is  perfectly  marvelous 
The  messages  are  punched  out  upon  strips  of  paper, 
and  are  sent  with  a  rapidity  far  exceeding  the  manipu¬ 
lative  shill  of  the  most  experienced  operator.” 


From  The  Annual  Jieportof  the  Western  Union  Tele¬ 
graph  Company,  1860. 

“  Tho  patent  for  the  automatic  or  fast  system  is  owned 
by  the  Western  Union  Co.,  Ac.,  It c.” 


From  Ihe  telegrapher,  vol.  vi.,  p.  100,  February  5 
1870.  letter  of  D.  11.  Crttig. 

“  Mr.  little  and  friends  have  cheerfully  awarded  t< 
Bain  the  credit  of  boing  the  first  to  conceive  of  t 
"fust  ”  or  automatic  process  of  telegraphing ;  but  whilst 
Bain’s  process  was  ingenious  it  was  not  practical ;  ant 
the  difference  (which  Mr.  Westbrook  wishes  to  lmvt 
stated)  between  Bain  and  little  is  precisely  tho  same 
is  between  little  and  Westbrook,  to  wit :  little’s  Sys¬ 
tem  of  Automatic  Telegraphy  is  thoroughly  practical, 
nuch  more  correct  and  reliable,  ami  ten  it  tig 
imes  more  rapid  than  the  Morse  hand-key  system." 


From  The  Jleport  of  the  National  Telegraph  Company, 
18G9,  pp.  4  and  6. 

“Tho  little  automatic  or  fast  system."  *  * 

"  The  yiut  system."  9  9  “  This system  of  send¬ 
ing  messages  by  telegraph,  invented  by  George  little." 

“  A-  practical  system  of  ‘  fast  ’  or  1  automatic  tclo- 
graph,’  ”  page  8. 

“  Bonelli  (in  1804)  introduced  the  fust  system  of  auto¬ 
matic  telegraphy ,”  page  0. 

“ Bain-Ilumaston,  ‘machinery  for  fast  or  automatic 
telegraphy.’  ”  page  10. 


From  Professor  Morse's  Report.  Journal  of  the  Tele¬ 
graph,  vol.  iii.,  p.  87,  January  16,  1870. 

11  The  reason  why  automatic  telegraphy  has  not  been 
i  practical  success  is  not  duo  to  any  fnilure  to  transmit 
and  record  rapidly  and  accurately,  but  to  tho  want  of 
somo  rapid,  economical  mode  of  preparing  the  matter 
for  transmission.  It  is  in  this  direction  wo  nro  to  look 
Ibr  a  solution  of  the  problem.  Tho  other  part— that 
of  transmitting  and  recording  at  a  very  rapid  rate — has 
been  repeatedly  demonstrated." 


“  Now  York,  March  8,  1870. 

“  Dear  Sir— In  your  note  to  me,  of  tho  8d  instant, 
ou  apprise  me  that  Mr.  C.  Westbrook  lays  olnitn  to 
he  invention  of  the  use  of  the  indented  or  embossed 
inper  of  the  Morse  Jtcgistcr  for  rapid  automatic  trails- 
lissivn,  and  this  claim,  you  say,  you  denied  him  on 
'hat  seemed  to  you  ‘sufficient  data  to  support  the 
eninl.’  Your  request  for  ‘enlightenment  on  tho 
ibjcct  ’  I  cheerfully  comply  with,  since  it  will,  I  think, 
illy  sustain  you  in  your  position." 


rom  The  Telegrapher,  vol.  vi.,  p.  408,  August  18, 1870. 

Automatic  Telegraphy.  • 

“In  answer  to  several  recent  inquiries  relative  to 
ie  ‘fast  system  of  telegraphy,’  ol  which  so  much  was 
id  six  or  eight  months  ago  by  Mr.  D.  II.  Craig,  and 
Inch  lias  been  so  much  dcoried  by  parties  whoso  in- 


to  rests  its  success  would  jeopardize,  wo  arc  informed 
that  Mr.  Craig  and  his  associate  arc  still  sanguino  ol 
its  success.  Should  it  realize  one-half  of  the  advan¬ 
tages  claimed  it  cannot  fail  In  have  an  important  influ¬ 
ence  ill  the  future  of  scientific  and  practical  telegraphy 
everywhere." 


Extract  from  a  letter  by  IX  H.  Craig,  published  iu  the 
New  York  Herald,  August  20th,  1870,  under  title 
of  Automatic  nr  Fast  Telegraphy. 

“Tlie  interest  you  have  evinced  in  the  subject  ol 
automatic  telegraphy  leads  me  to  believo  that  you  and 
your  readers  will  he  gratified  to  learn  what  lias  been 
accomplished  during  the  last  six  or  eight  months  in 
the  development  of  the  Lillk  system  of  fast  telegraphy. 

“We  have  just  commenced  to  mnke  tests  of  the  elec¬ 
trical  condition  of  our  line  and  tho  capabilities. of-our 
mimnatitrmuchmery  for  ‘fast  telegraphy.'  'V .  ' !  'n. 


A  description  of  the  Wheatstone  Automatic  Telegraph, 
forwarded  by  Henry  Weaver,  Esq.,  of  London,  to 
the  Western  Union  Telegraph  Company,  contains 
the  accompanying. — 1870. 

“Sin  Ciiahi.es  WiiKATOTO.s-n’s  limn  Si-nun  Tkle- 


Moses  G.  Farmer  on  Automatic  Telogrnphy.— Sait 
American,  vol.  xxiii.,  p.  888,  Dee.  17th,  1870 
“In  order  to  nttiiiu  tho  exceptionally  high  rt 
speed  which  lias  been  experimentally  obtained  upo 
automatic  lino  recently  constructed  between  Now  ’ 
and  Washington,  *  *  *  why  not  employ  i 

kind  of  an  automatic  system  to  transmit  tho  mess 
and  employ  the  l’helps’,  House,  or  some  other  pri 
to  simply  copy  them  7  " 


Automatic  Telegraphy,  by  D.  If.  Craig.—  Seie 
American,  vol.  xxiv.,  No.  1,  p.  4,  January  1, 187 
“I  have  read  with  attention  the  speculations  of 
ressor  Fnrmcr  and  Mr.  Prescotl,  in  recent  numbe 
the  Scientific  American,  upon  the  subject  of  autor 
ir  fust'  telegraphy. 

“  Mr.  Prescott's  statement,  assented  to  by  Prof, 
nor,  that  ’  the  speed  of  automatic  transmission  v 
nverscly  ns  tho  squnro  of  the  length  of  tho  lin 
loubtlcss  good  ‘science,’  as  they  understand  it, 
iriowed  in  tho  light  of  our  cxpcrienco  it  is  arrant 
'enso,  as  all  our  tests  go  unerringly  to  prove  that, 
ho  Little  system  of  automatic  or  -fast'  telegraphy 
ongcr  the  oireuit  tho  better  the  work. 

“Tho  difficulty  with  Air.  Prescott,  and  all  i 
rnrties  who  have  strivon  so  vigorously  to  writo  d 
lutomntic  telegraphy,  is,  that  through  ignoranci 
lesign,  they  liavo  utterly  ignored  tho  important 
hat  Mr.  Little  uses  electricity,  under  entirely  diffc 
sonditioiis  from  what  it  was  ever  before  used  by 
icrson  who  bus  experimented  in  fast  telegraphy,  ni 
s  to  this  fact,  and  not  at  all  to  the  fact  that  wo  ha 
mperior  line,  llint  wo  trunsmit  and  record  correctly  1 
cords  per  minute,  or  00,000  words  per  hour,  over  a  > 


“The  Little  system  of  fast  telegaphy,  having  bcon 
satisfactorily  tested,  in  an  experimental  way,  is  now 
about  to  bo  placed  before  tho  public  of  Washington 
and  Now  York  and  intermediate  cities  for  tho  transac¬ 
tion  of  public  business,  and  it  is  not  doubted  by  any- 
0110  wiio  understands  the  principles  which  govern  tho 
new  system  that  it  is  destined  to  offeot  a  complete 
revolution  in  the  whole  telegraph  and  postal  business 
of  the  country.” 


Automatic  Telegraphy. — The  Whcatslono  and  Siemen's 
System. — The  Telegrapher,  vol.  vii.,  p.  899.— -Au¬ 
gust  6, 1871. 

“In  common  with  most  other  systems  of  automatic 
or  fust  speed  telegraphs,  Professor  Wheatstone  employs 
three  distinct  machines — the  perforator-  the  trans¬ 
mitter,  and  the  receptor.” 


h'roui  The  Mechanic's  Magazine.  Loudon,  December  80, 
1871 ;  vol.  xcv.,  No.  2,405,  page  510. 

“  Wheatstone's  Automatic  System. 

“  In  tho  ordinary  systoin  of  telegraphy,  on  the  most 
rapid  instruments  in  use,  tho  limit  of  speed  is  not  that 
of  tho  capability  of  tho  instrument  itself  to  transmit 
tho  signs  sont,  but  depends  solely  upon  tho  skill  of  tlm 
operator  in  rapidly  moving  tho  key  or  koys  used  to- 
transmit  tho  signals;  and  it  will  bo  evident  that  if  it 
is  required  to  send  a  greater  number  of  words  in  a 
given  timo  than  one  operator  is  cnpablo  of  sending,  wo 
must  increase  tho  numbor  of  operators — necessitating 
in  tho  ordinary  system  an  increased  numbor  of  wires 
and  instruments.  Tho  automatic  system,  by  making 
tho  formation  of  the  different  signs  independent  of 


their  transmission,  does  away,  within  eortnin  limits, 
with .tho  necessity  of  increasing  tho  number  of  wires 
and  instruments  along  with  tho  increase  of  tho  opera- 


From  The  Journal  of  the  Society  of  Telegraph  Engineers. 
London,  1872 ;  vol.  i.,  No.  1,  page  39.— March  18, 
mvo  1 


“Tho  following  paper  on  1  Automatic  Telogmphs 1 
was  read  by  Mr.  B.  S.  Ciillcy  : 

“  The  advantages  of  machine  ovor  hand  lubor  are  as 
apparent  in  telegraphy  as  in  any  other  mechanical  art, 
even  without  regarding  speed  for  signals  mechanically 
sent,  will  always  he  bettor  formed,  and  more  legible, 
than  tlioso  sont  by  the  key. 

“But  wo  are  able  to  show,  from  experience,  that 
besides  assuring  better  signals,  a  greatly  enhanced  sped 
can  be  attained  by  the  automatic  system." 


Wheatstone’s  Automatic  Tolegrapli  System. — Tela- 
graphic  Journal.  London,  December,  1872. 

“Automatic  instruments  have  bcon  devised  for  tele¬ 
graphy  for  the  same  reasons  as  have  influenced  tlm 
introduction  or  machinery,  vis.,  speed,  and,  xoilh  sgiced, 
accuracy." 


From  tho  lleporl  of  the  Postmaster  fioneral  for  1872 
p.  28. 

“Tho  introduction  of  the  duplex  transmitter,  doub¬ 
ling  tlio  capacity  of  lines  for  through  b  usincss,  and  of 
the  'fast'  or  •automatic'  system,  by  which  one  wire 
can  bo  inado  to  do  tlio  work  of  six.” 


•om  The  Report  of  the  Postmaster  General  for  1873. 
"Tub  Automatic  oit  Fast  S\sn  i  " 

Extract  from  circular  letter  of  D.  II.  Craig,  maim- 
sr  of  the  news  ilc|inrtmoiit  of  tlic  Automatic  Tele- 
•aph  Company,  dated  February,  1878:  After  more 
inn  three  years  of  patient  waiting  and  watching,  I  am 
last  able  to  announce  to  you  that  automatic  or  fast 
hjraphy  is  absolutely  finished  and  iu  practical  opera- 


Citations  fuom  Tki.kiiiiathic  Litekatuuk. 


THE  DUPLEX  Oil  MULTIPLE  SYSTEM.  . 


I'rom  The  Telegrapher,  vol.  iv.,  p.  268,  April  11,  1808. 
Edison’s  Double  Tiiansmhtkii. 

"By  means  of  this  ingenious  arrangement  two 
loiiumuiieulions  may  be  transmitted  in  opposite  dirco- 
ions  at  the  same  time  on  a  single  wire.” 


From  The  Telegrapher,  vol.  iv.,  p.  280,  May  2, 1808. 
The  Double  Tbansmission  System  of  Teleo bath¬ 
ing,  by  F.  L.  Pote. 

“  A  systom  of  telegraphing  which  should  admit  of 
the  transmission  of  communications  in  opposito  direc¬ 
tions  over  a  singlo  wire  at  the  same  time."  *  *  * 
“Soon  after  the  experiments  of  Gintl,  improved  sys¬ 
tems  of  double  transmissions  woro  invontod  by  Frischon 
and  Sicmons-Halsko." 


From  The  Telegrapher,  vol.  iv.,  p.  297,  May  9, 1868. 

“  An  improved  systom  of  double  transmission  was 
invonted  in  tho  year  1864  by  an  inspector  of  telegraphs 
in  Hanover,  named  Frisohen." 


Advertisement  in  The  Telegrapher,  vol.  v  p  129 
Dec.  12,  1868. 

EDISON'S 

DOUBLE  TRANSMITTER, 

The  most  Practical  Apparatus  of  its  kind  yet  invonted. 
Complete  Sets  (put  up  in  working  order), 
Price,  $4.00,  $4.60,  $5.00. 

For  further  information,  address 

THOMAS  A.  EDISON, 

Caro  Okas.  Williams,  Jr., 
Telegraph  Instrument  Maker, 
109  Court  street, 

Boston,  Mass. 


From  The  Telegrapher,  vol.  v.,  p.  272,  April  17,  1869. 

“  On  Tuesday  evening  last  a  new  double  transmitter, 
on  an  improved  plan,  invented  by  Mr.  T.  A.  Edison, 
was  tried  between  New  York.aml  Bochester." 


From  The  Telegrapher,  vol.  vi.,  p.  88,  Nov.  6, 1870. 

“  The  Bankers  &  Brokers’  Telegraph  Company  have 
equipped  one  of  their  wires  between  this  city  and 


21 

Philadelphia  with  Stearns’  apparatus  for  double  trans¬ 
mission,  enabling  the  operators  to  work  both  ways  at 
the  samo  time  on  one  wire.” 


From  The  Journal  of  (he  Telegraph,  vol.  v.,  p.  180, 
May  1,  1872. 

11  As  an  ovidcncc  of  tlic  value  of  Mr.  Stearns’  ma¬ 
chinery  for  the  transmission  of  messages  both  tvnys 
over  the  same  wire  at  tho  same  lime,  wo  givo  tlie  fol¬ 
lowing  *  *  * :  ” 

“Here  is  avast  advantage  gained.  No  automatic 
plan  approaches  it  in  positive  value.  It  is  the  most 
marked  ndvanco  yet  made  in  telegraphic  service,  for, 
though  it  docs  not  cpticken  the  process  of  transmission, 
it  practically  does  so  by  doubling  the  capacity  of  every 


From  The  Journal  of  (he  Telegraph,  vol.  v.,  p.  148, 
May  15,  1872. 

’The  Western  Union  Telegraph  Company  has  ae- 
quired  the  exclusive  ownership  of  the  patents  of 1SG8, 
of  Joseph  B.  Stearns,  of  Boston,  Mnss.,  for  instru¬ 
ments  by  which  telegraph  messages  are  transmitted  in 
opposite  directions  by  tho  use  of  a  single  wire." 


Editorial  Caption  Journal  of  the  Telegraph,  vol.  vi., 
p.  88,  January,  1878. 

“Successful  Experiments  with  the  Stearns’ 
Duplex  Working  a  2,000  Mile  Circuit. 


letter  from  C.  H.  Haskins,  in  London  Telegraphic  Jour¬ 
nal,  June  10, 1878. 

“  I  note  In  your  journal  of  the  16th  February,  in 
your  article  on ‘Duplex  Telegraphy,’ that  Mr.  Baggs 
was  tlio  first  to  add  the  condenser  to  tho  existing  appa¬ 
ratus.  I  had  supposed  myself  familiar  with  all  that 
had  been  made  public  in  Europe  or  in  this  uouutry  in 
double  transmission.  *  *  *  ” 

From  London  Telegraphic  Journal,  vol.  vi.,  p.  217. 

“  The  Stearns’  duplex  lias  been  used  for  several  years 
in  tho  United  Stnlcs.  *  *  * 

Like  all  double  transmission  systems  since  Gintl, 

Citations  showing  the  scope  and  meaning  attached 
to  the  expression,  “System  of  Automatic  or  Fast 
Telegraphy,”  and  tho  use  of  “automatic”  or  “fast," 
as  convertible  terms,  by  George  Harrington  and  by 
George  Little,  whoso  name  appears  in  tho  Edison 
assignment  to  Harrington,  ns  designating  the  system 
upon  which  tho  Edison  improvements,  which  form  the 
subjeot  of  that  assignment,  were  or  wore  to  be  based. 

Extract  from  ngreemont  botwcon  Harrington,  and  Little, 
made  Sept.  22, 1871: 

“Whereas,  George  Little,  of’ltullierford  Park,  Now 


From  The  Bcport  of  the  Postmaster  General  for  1872, 
pngo  28. 

“Tho  introduction  of  tho  duplex  transmitter,  doub¬ 
ling  tho  capacity  of  lines  for  through  busincsss,  and  of 
tho  1  fast  ’  or  '  automatic  ’  system,  by  which  ono  wire 
eau  be  made  to  do  the  work  of  six.” 


Jersey,  lies  invented  nnd  patonlcd  n  System  of  Auto¬ 
matic  on  Fast  Teleguapiiy. 

"And  whereas,  the  said  Qcorgo  Harrington  is  inter¬ 
ested  to  the  extent  or  nnc-tliird  in  certain  inventions 
and  patent  rights,  useful  in  mUomalie  telegraphy,  in- 
eluding  a  copying  printer  of  Thomas  A.  Edison,  of 
Newark',  New  Jersey. 

“  Now,  therefore,  *  *  *  so  far  as  such  inventions 
are  applied  by  said  company  to  automatic  telegraphy 
and  used,  lets.,  &c." 


om  Circular  of  George  Harrington,  President  of  the 
Automatic  Telegraph  Company,  New  York,  Jan. 


"The  President  of  the  Western  Union  Company 
having  set  forth  in  a  published  letter  *  *  * 

concerning  the  Automatic  or  fash system.  *  *  * 

"The  people  are  interested  only  in  knowing  whether 
the  capacity  and  economy  of  the  automatic  system 
are  to  enure  to  their  benefit."  *  *  * 


From  Letter  of  George  Little  to  Win.  Orton.— JV.; 

Telegrapher,  No.  438,  p.  269,  October  16,  187-J. 

To  Wit.  OltTON : 

“You  say  of  fast  telegraphy,  ‘this  is  a  favorite  des¬ 
ignation  given  by  its  friends  to  what  is  better  known 
ns  the  automatic  tyitcm.  Why  it  should  be  called 
‘fast’  I  have  never  been  able  to  comprehend.  I  will' 


“Little’s  Rapid  Automatic  Tblegiiapii  System.” 


The  general  literature  of  the  art  thus  disoloses  the 
difference  between  tho  automatic  nnd  the  duplox  sys¬ 
tems,  and  the  fact  that  the  facility  for  rapid  signaling 
afibrded  by  the  automatic  system  became  its  distinctive 
uharuutcnstiu  and  led  to  its  being  familiarly  calle.1  the 
“  fast  system.” 

Hence  the  uso  of  the  words  “  automatic  ’’  and  “  fust" 
ns  synonyms  by  Edison  and  Harrington  in  tlioir  agree¬ 
ment  of  August  -1,  1871,  nnd  the  like  use  of  similar 
terms  by  Harriiir'ton  and  Little  in  their  ngreemont  ol 
September  22,  1S71,  and  by  George  Little,  in  his  letter 
of  Oelolier  15,  1874,  to  William  Orton,  and  by  George 
Harrington,  in  his  circular  to  the  public  of  January 
2S,  1874,  is  proved  to  bu  the  only  uso  of  tlioso  words, 
in  connection  with  telegraphy,  which  is  justified 
by  and  in  keeping  with  common  and  long-continued 

That  the  “automatic  or  fast"systom  is  one  thing, 
an-l  tho  system  of  multiple  transmission  is  another 
thing,  is  illustrated  by  tho  fact  that  both  systems,  if 
desired,  may  be  used  together.  That  is  to  say',  sevoral 
messages  may  be  simultaneously  transmitted  by  tho 
simultaneous  operation  of  several  automatic  signaling 
macliinos,  thus  adding  tho  clomonl  of  "fast”  to  tho 
clement  of  multiplicity. 

Tho  wire  upon  which  the  electrical  ourrent  travols 
in  ono  direction,  nnd  tho  enrtli,  through  which  the  our-, 
rent  returns  to  its  starting  point,  may  bo  likonod  to  a 
double  track  railroad.  The  performance  of  a  given 


29 


amount  of  transport  sorvico  by  moans  of  a  train  run 
at  a  speed  of  fifty  miles  an  bour  would  be  properly  re¬ 
ferred  to  as  exhibiting  a  fast  system  of  railroading. 
But  the  same  volumo  of  sorvico  could  be  performed  by 
five  trains  of  like  capacity  running  at  the  rate  of  only 
ten  miles  an  hour.  To  call  the  latter  a  Inst  system  of 
railroading  would  be  obviously  absurd.  Nevertheless, 
the  fast  system  might  be  applied  to  the  five  trains  by 
giving  them  all  the  speed  of  fifty  miles  an  hour,  just  as 
the  fast  system  of  telegraphy  might  be  adopted  for  tlio 
simultaneous  transmission  of  several  messages  by  sub¬ 
stituting  automatic  or  mechanical  signaling  for  the 
hand-signaling  of  several  operators. 


V.— The  suggestion  of  issuing  pntcnLs  to  Edison 
alone  eannot  be  defended.  His  double-dealing  lias 
given  rise  to  tins  complication.  Neither  his  personal  1 
action,  nor  the  merits  of  Mr.  Jay  Gould,  his  attorney 
irrevocable,  appoar  to  point  them  out  as  persons 
specially  trustworthy  to  hold  title  for  others.  Mr. 
Prescott,  tlie  only  person  who  is,  without  dispute,  en¬ 
titled  to  some  slinro  in  the  monopoly,  should  not  bo 
oxcludcd  from  the  letters  patent,  and  bo  thus  put  to 
demand  another  assignment  to  restore  him  to  his 
rights.  In  Gaylor  vs.  Wilder,  the  Supremo  Court,  aficr 
holding  that  an  assignment  of  the  invention  before 
issue  of  letters  patent,  passed  a  legal  title  to  them 
upon  issue,  the  issue  having  been  improperly  made  to 
the  inventor,  instead  of  to  the  assignee,  said:  "We 
aro  the  less  disposed  to  give  it"  (tlie  assignment)  "any 
different  construction,  because  no  purpose  of  justice 
would  bo  answered  by  it,”  p.  408  j  and  further:  11  Kits- 
gerald  sets  up  no  olnim  against  tbo  assignment,  and  to 
require  another  would  he  mere  form,"  p.  494. 

In  this  ease  Edison  sots  up  no  olnim  against  the 
assignment  to  Prescott  It  is  Harrington  who  sets  up  . ! 


a  claim  adverse  to  us.  Edison’s  lottor  referring  to  his 
“misapprehension,"  and  his  futile  effort  to  withdraw 
a  request  (made  on  good  and  indefensible  considera¬ 
tion),  do  not  tend  to  impeach  the  assignment  as  be¬ 
tween  himself  and  Prescott.  Even  if  Harrington  is 
held  the  ownor  of  two  thirds,  the  assignment  is  still 
good  to  take  from  Edison  all  the  interest  he  has  re- 
mummy.  That  Prescott  is  the  ouly  person  who  is, 
without  dispute,  the  owner  of  some  interest  in  tlie 
patents  to  be  issued  will  appear  by  considering,  as  is 
done  below,  the  state  of  each  claimant’s  titlo : 

1st.  As  to  Harrington.  Prescott  disputes  the  as¬ 
serted  effect  of  tlie  Edison  assignment  to 
Harrington  of  two-thirds,  and  tlio  decision  of 
the  Commissioner,  or  of  a  court,  may  declare 
Harrington  to  bo  totally  without  interest. 

2d.  As  to  Edison.  Edison  professed  to  havo  as¬ 
signed  to  Harrington  two-thirds.  Tf  this  is 
so,  he  certainly  lias  also  assigned  Prescott 
half;  lie  is  therefore  one-sixth  overdrawn  and 
must  bo  held  to  be  totally  without  interest. 

8.  As  to  Prescott.  If  Prescott’s  own  theory  is 
right,  he  is  the  owner  of  half.  If  Harrington 
is  right,  Prescott  (having  been  assigned  one- 
half  of  the  whole)  will  take  tlie  remaining 
one-third  (being  all  ho  can  get).  If  Edison 
is  right  in  his  construction  of  his  agreement, 
still  Prescott  has  one-third  j  or  if  ho  should 
attempt  to  claim  that  lie  assigned  only  one- 
half  his  interest,  that  being  one-third,  Pres¬ 
cott  has  still  one-sixth.  Tims  Prescott  is  tlio 
only  person  who,  in  all  events,  must  bo  bold 
to  have  some  interest. 

The  Commissioner  ought  to  issue  Letters  to  Pres¬ 
cott  and  Edison,  leaving  Harrington  to  bring  his  suit 
against  them  ns  his  trustcos. 


1st  Because  lilt,  title  is  safe  in  thou,  by  force  of 
tlioir  agreement  on  recoivl.  Harrington  will 
(lie  and  Edison  being  ill  confederation)  And 
the  title  intact  when  lie  wants  to  bring  sail. 

2d.  Because,  if  given  to  Edison  alone,  the  state  of  the 
record  title  favors  the  granting  of  assignments 
or  licenses  behind  our  backs  by  himself  or 
his  attorney,. .lay  Gould,  which  we  might  not 
ho  able  to  prove  were  not  in  good  faith,  and 
which  would  at  least  needlessly  complicate 
matters,  and  cause  useless  expense. 

M.  Because,  if  issued  to  Edison  alone,  a  suit  must 
be  instituted  to  substitute  some  one  with 

Certainly,  Prescott  will  be  put  in  with  him 

Perhaps  Harrington  ami  Prescott  may  oust 
him  altogether. 

rr  l’reseolt  is  put  in  now,  the  simple  ques¬ 
tion  for  litigation  will  be,  who  is  his  partner? 
and  that  suit  would  bo  prosecuted  at  the  ex¬ 
pense  of  the  parties  who  arc  the  real  contest¬ 
ants  upon  the  material  question  whether  they 
have  any  interest,  and  not  that  of  the  party 
as  to  whom  the  only  question  is,  what  is  the 
extent  of  his  admitted  interest? 

It  seems  absurd,  therefore,  lo  leave  out  the 
only  man  who  must  surely  be  put  in  hereafter. 

4th.  Because  the  only  specific  assignment  on  re¬ 
cord  is  that  to  Prescott.  No  question  of  fact 
is  raised,  or  need  bo  determined,  to  enable  tlio 
Commissioner  to  know  that  the  inventions  in 
question  are  the  vory  ones  named  in  his 
assignment,  and  at-  the  tiino  of  its  dolivory  in¬ 
tended  to  bo  covered  by  Prescott’s  assign¬ 
ment;  and  while  it  is  certain  that  Edison  in¬ 
tended  to  convey  an  interest  in  theso  inven¬ 


tions  to  Prescott,  the  utmost  that  can  bo  said 
for  Harrington’s  claim  is  that  an  ingonious 
construction  may  porhaps  raise  somo  doubt 
whether  lie  did  not  intend  to  convoy  an  inter¬ 
est  to  Harrington. 

On  the  other  hand,  to  decide  in  fnvor  of 
Harrington,  makes  it  necessary  to  try  two  im¬ 
portant  questions,  which  can  nowhere  be  per¬ 
fectly  tried  except  in  a  court. 

1«/  Question  of  Imxo. — Is  the  writing  of  1871  an  as¬ 
signment  at  all,  capable  to  pass  the  legal  title 
to  specific  inventions;  or  cnpablo  to  do  more 
limn  give  a  cause  of  action  for  damages  or 
specific  performance  if  the  titlo  remains  (ns  is 
not  the  case)  capable  of  being  conveyed  in- 
tact  by  llio  contracting  party  ? 

(Note.) — It  sccn.s  H.  and  E.  have  so  con¬ 
strued  that  paper  since  they  havo  passed  and 
recorded  a  specific  assignment  for  each  inven¬ 
tion  as  it  was  born. 

%il  Question  of  Fact. — Whether,  considering  the  paper 
in  proper  form  to  operate  as  an  assignment, 
the  patents  in  question  are,  in  fact,  within 
the  description  of  inventions  which  it  pur¬ 
ports  to  convoy-  V 


VI.— Letters  patent  should  issue  lo  Edison  k  Pres¬ 
cott,  in  accordance  with  their  joint  request  of  August 
19, 1874. 

J.  Huw.ky  Asutox, 

GiIOSVF.N'OI!  PottTKIt  IiOWttEY, 
Boscoi:  Con-ki.ixg, 

Counsel  for  tlio  Petitioner, 
George  13.  Prescott 


APPENDIX. 


PATENT  LAWS. 


Section  38,  Aot  1870. 

Patents  tnay  be  granted  and  issued  or  reissued  to 
the  assignee  of  the  inventor  or  discoverer- — the  assign¬ 
ment  thereof  being  first  entered  of  record  in  the  Patent 
Office;  but  in  such  ease  the  application  for  the  patont 
shall  be  made,  and  the  specification  sworn  to  by  the 
inventor  or  discovcror,  and  also,  if  lie  be  living,  in  ease 
of  an  application  for  reissue. 


Sec.  4,895  of  Rev.  Statutes. 

Patents  may  bp  granted  and  issued  or  reissued  to 
the  assigneo  of  the  inventor  or  discoverer ;  but  the  as¬ 
signment  must  first  bo  entered  of  record  in  the  Patent 
Office. 


And  in  all  cases  of  an  application  by  an  assignee  for 
the  issue  of  a  patent,  tho  application  shall  be  made 
and  tho  specification  sworn  to  by  the  inventor  or  dis¬ 
coverer. 


Agreement— Edison  and  Ha«bin(Iton,  dated 
Apiiii.  4,  1871. 

Whereas,  I,  Thomas  A.  Edison,  of  the  oity  of  New¬ 
ark,  Stale  of  New  Jersoy,  for  certain  valid  and  valu¬ 
able  considerations  to  me  in  band  paid,  and  in  further 
consideration  of  certain  covenants  and  stipulations  to 
be  fulfilled  by  George  Harrington  of  Washington,  Dis¬ 
trict  of  Columbia,  did  stipulate  and  agree  to  invent 
and  construct  lor  the  said  Harrington  full  mid  com-- 
plete  sets  of  instruments  and  machinery  that  should 
successfully  and  economically  develop  into  practical 
use  the  Little  or  other  system  of  automatic  or  fast 
system  of  telegraphy,  and  subsequently  to  improve 
and  perfect  such  instruments  and  machinery  by  adding 
thereto  from  timo  to  time  such  further  inventions  ns 
experience  should  demand  and  my  ability  as  nil  inven- 
tor  and  electrician  might  suggestand  permit,  ami  further¬ 
more,  to  prepare  or  cause  to  bo  prepared,  the  necessary 
description  pnpors,  tho  model  and  drawings  requisite 
to  obtain  patents  for  all  suoli  inventions  and  improve- 
inentB,  the  said  inventions  and  improvements  to  bo  the 
joint  property  of  the  said  Harrington  and  myself,  and 
the  patents  to  be  issued  to  the  said  Harrington  and 
mysolf  in  tiie  proportionate  interest  of  two-thirds  to 
said  Harrington  and  one-third  to  mysolf;  the  whole 
to  be  under  the  solo  control  ol  said  Harrington,  to  bo 
disposed  of  by  him  forourmutral  benefit  in  tho  propor¬ 
tions  hereinbefore  recited,  in  such  manner  and  to  such 
extent  ns  ho,  the  said  Harrington,  should  deem  advis- 


84 

able,  with  power  to  sell,  traiisfer  and  convey  the  whole 
or  any  part  of  tho  rights  and  titles  in  and  to  any  or  all 
of  said  inventions  and  improycmenis  as  also  of  the 
patent  or  oilier  rights  arising  therefrom.  And  the  said 
Harrington  having  faithfully  fulfilled  all  of  the  cove¬ 
nants  and  stipulations  entered  by  him  : 

Now,  therefore,  bo  it  known  thnl,  in  consideration 
thereof  and  of  the  sum  of  ono  dollar  to  me  in  hand  paid, 
I,  Thomas  A.  Edison,  of  the  city  of  Newnrk,  State  of 
New  Jetsey,  do,  by  these  presents,  hereby  assign,  set 
over  and  convoy  to  him,  the  said  Harrington,  two- 
thirds  in  interest  of  all  my  said  inventions,  including 
therein  all  my  inventions  of  mechanical  or  copy¬ 
ing  printers,  and  of  all  the  patents  for  all  such  inven¬ 
tions  and  printers,  whether  already  issued,  applied 
for,  or  to  be  hereafter  applied  for,  mid  or  all  and  what- 
soever  ol  my  inventions  ntul  improvements  made  or  to 
be  made,  and  ot  all  the  patents  that  may  be  issued 
•  therefor,  that  are  or  may  be  applicable  to  automatic 
telegraphy  mechanical  printers. 

And  whereas,  I  am  desirous  of  obtaining  the  co¬ 
operation  and  assistance  of  the  said  in  disposing  of 
of  my  said  one-third  interest  ns  before  recited,  and  for 
die  purpose  of  united  and  harmonious  action  in  nego¬ 
tiating  for  its  use  or  ils  sale  mid  transfer  by' 
-  to  others  in  conjunction  with  his  own  mid 
in  such  free  and  unrestricted  manner  as  will 
tend  to  success,  and  for  the  sum  of  one  dollar  to  me  in 
hand  paid,  the  receipt  whereof  is  hereby  acknowledged. 
Now,  therefore,  bo  it  known,  that  I,  Thomas  A.  Edison, 
ol  tlie  city  of  Newnrk,  State  of  New  Jersey,  have  con¬ 
stituted  and  appointed,  and  by  these  presents  do  consti- 
tutc  and  appoint,  George  Harrington,  of  the  city  of 
Washington,  District  of  Columbia,  my  true  and  Inwful 
and  only  attorney  irrevocable,  with  power  to  substi¬ 
tute  for  n,o  anfi  j„  ,lly  Wllllej  mil)  in  sucU  mnnnor  I1S  |l0 
may  think  best,  to  sell,  transfer,  mid  confer  all  of  tny 
rights,  titles  end  interest  in  and  to  any  nud  all  of  my 
said  inventions  and  the  improvements  thereto,  whether 


made  or  to  bo  made,  and  to  sell,  transfer  and  convey 
all  my  rights,  by  patents  or  otherwise,  nrising  there¬ 
from  already  mado  and  obtained,  and  all  snob  as  may 
hereafter  mado  or  obtained,  mid  to  oxebuto  in  full 
any  or  all  tho  necessary  papers  and  documents  requi¬ 
site  fertile  transfer  of  title,  mid  to  invest  in  otiier  par¬ 
ties  full  and  legal  ownership  therein,  hereby  divesting 
myself  of  and  interesting  him,  the  said  Harrington,  with 
all  the  powers  necessary  in  the  premises,  fully  and  com¬ 
pletely  to  carry  out  tho  purposes  and  intentions  here¬ 
in  set  forth,  hereby  fully,  confirming  all  that  my  said 
attoraoy  may  or  shall  do  in  the  premises  ns  fully  ns  if 
done  by  me  in  person,  nnd  requesting  the  Commissioner 
of  Patents  to  recognise  him  as  such  attorney. 

Ill  witness  whereof.  I  have  hereunto  set  my  hand 
and  affixed  my  seal,  in  the  city  of  Newark,  this  fourth 
day  ol  April,  eighteen  hundred  and  soveuty-oue. 

.  T.  A.  Edison,  [seal.] 

In  presence  of 

A.  D.  ComittN, 

A.  B.  Candkk. 


Assignment — Edison  to  Pkescott,  dated  August 

10th,  1874 

A. tnJen  of  agreement  made  and  entered  into  this 
nineteenth  day  of  August,  A.  D.  1874,  by  and  between 
Thomas  A.  Edison,  of  Newark,  in  the  Slate  of  Now 
Jersey,  and  George  B.  Prescott,  of  tiio  city  and  Stato 
of  Now  York. 

Witucssoth :  Whereas  said  Edison  has  invented  cer¬ 
tain  improvements  in  duplex  telegraphs  for  which  lie 
has  executed  or  is  about  to  execute  applications  for 
letters  patent  of  the  United  States,  nnd  such  nppliea 
boas  are  numbered  04,  05,  90,  97,  08,  90  nnd  100,  nnd 
are  dated  August  10, 1874,  mid  said  Prescott  is  entitled 
to  an  equal  interest  in  the  same  and  others  hereafter 
Mentioned. 


_ 


Therefore,  in  consideration  of  the  promises,  and  the 
sum  of  ono  dollar  in  hand  paid,  the  roceipt-whereof  is 
hereby  acknowledged,  the  said  Edison  has  sold  and 
assigned,  and  does  hereby  set  ovor  and  convoy  unto 
the  said  George  B.  Prescott,  one  undivided  half  part 
of  the  right,  title  and  interest,  of  every  character,  in,  to 
under,  and  connected  with,  oaeh  and  all  the  aforemen¬ 
tioned  inventions  and  loiters  patent  on  the  same,  when 
granted,  and  authorizes  and  requests  tho  Commissioner 
of  Patents  to  issue  tho  said  letters  patent  to  Thomas 
A.  Edison  and  George  B.  Prescott,  as  the  assignees  of 
said  Edison,  for  the  use  a.id  behoof  of  themselves,  nud 
their  legal  representatives.  And  whereas  the  said 
liaison  l,as ttlso  invented  otlusr  improvements  in  duplex 
telegraphs,  tic  1  ,  t  o  of  which  have  been  lo.l-.ed 

with  George  if.  Phelps  for  the  purpose  of  models  bo- 
ing  constructed,  it  is  hereby  agreed  that  such  inven- 
tioiiit  are  included  in  this  present  agreement,  and  that, 
when  the  applications  for  patents  are  made,  the  patents 
to  be  granted  in  accordance  horuwith,  and  that  the  said 
liaison  slmll  sign  the  required  papers  therefor. 

Tins  transfer  is  made  on  tho  following  terms  and 
conditions,  winch  arc  hereby  made  part  of  the  consid¬ 
eration  in  the  premises. 

First.  That  liotli  of  the  parties  shall  have  an  equal 
undivided  interest  in  all  letters  patent  of  the  United 
fatales,  or  of  any  foreign  countries,  which  tuny  be  granted 
for  nil  or  any  of  said  inventions,  or  of  any  future  im¬ 
provements  thereon  made,  by  cither  party,  anil  of  all 
extensions  and  reissues  of  any  such  lettcre  patent. 

Second.  That  whereas,  Edison  lins  heretofore  ex- 
pended  $1126  for  models  anil  patent  fees,  the  benefit 
of  which  lie  contributes  to  tho  common  interest,  and 
waives  reimbursement  of  that  sum,  or  of  any  part  of 
it;  Prescott  hereby  agrees  to  pay  sololy,  and  without 
contribution  from  Edison,  all  tho  future  expense  mid 
cost  ot  specifications,  drawings,  models,  patent  oflied 


foes  and  patent  solicitors’  and  agents’  foes,  and  nil  other 
clmiges  incident  to  tho  procuring  of  lottors  patont  for 
any  of  said  inventions. 

Third. — Tlmt  neither  of  said  parties  will  sell,  assign, 
or  othorwiso  dispose  of  the  whole  or  any  part  of  his 
interest  in  said  inventions  or  letters  patent  thorefor, 
or  any  of  them,  without  tho  written  consent  thereto  first 
obtained  of  tho  other  party. 

Fourth. — That  neither  of  said  parties  will  himself 
manufacture,  use  or  sell,  nor  grant  licenses,  nor  the 
right  in  any  way  to  any  other  party,  to  manufacture, 
use  or  sell,  any  of  tho  said  inventions,  or  any  improve¬ 
ments  thereof,  or  any  machine  embodying,  or  article 
containing,  any  of  said  inventions  or  improvements,  or 
protected  by  any  of  said  letters  patent,  without  tho 
written  consent  first  obtained  of  tho  other  party. 


Fifth. — No  sale  of  0113-  of  tho  said  invent 
license  or  right  to  mako  or  use  tho  same. 


— lado  or  given,  except  at  a  prico  to  which  both 
parties  agree  111  writing,  and  all  net  profits  slmll  bo 
equally  divided  botween  tho  parties  hereto. 

Suth. — The  covenants  and  provisions  of  this  ngrcc- 
aient,  binding  either  of  the  parties  hereto,  shall  also 
hind  his  executors,  administrator,  and  assigns. 

In  witness  whereof,  tho  said  parties  have  hereunto 
sot  limit’  hands  and  seals,  tho  da)-  and  year  first  nbovo 
written. 

Thomas  A.  Edison,  [l.  a] 

_  Gkoiiok  B.  Pukscott.  [l.  s.1 

Witnesses-^— 

ILutor.D  Seriieix, 

Lejiuei,  W.  Sehhem,. 


Know  ull  men  by  thoso  presents,  that  wliorca 
Thoinns  A.  Edison,  of  Newark,  in  the  Slate  of  New , 
scy,  have  invented  certain  improvements  in  duplex  l 
graphs,  for  which  I  have  executed,  and  am  about 
execute,  applications  for  letters  patent  of  the  tin 
States,  and  such  applications  are  numbered  91,  95, 
97,  98,  91),  and  100,  and  nro  dated  August  19,  1871. 

And  whereas,  1  hnvo  invented  ot 
in  duplex  telegraphs,  the  descriptions  and  models 
which  have  been  lodged  with  It  W.  Serrell,  of 
city,  county  and  State  of  Now  York,  for  the  pnrposi 
obtaining  patents. 

And  whereas,  I  am  the  inventor  of  other  impm 
ments,  relating  to  duplex  ns  well  as  qiindruplcx  t< 
graphs,  for  both  of  wliiuli  l  am  about  to  innko  ap 
cation  for  lettcra  patent. 

Now,  in  consideration  of  one  dollar  to  mo  in  In 
paid,  the  receipt  of  which,  as  well  as  other  good  : 
valuable  considerations,  I  do  hereby  acknowledge,  I 
hereby  give  and  grant  to  Jay  Gould,  of  the  city,  com 
and  State  of  New  York  full  (and  irrevocable)  pov 
and  authority  to  sell,  assign,  transfer  and  set  ovcr.ui 
.1113  person,  persons  or  corporation,  any  right,  title  a 
interest  in,  or  to,  any  or  ull  of  said  inventions,  or  i 
provemenls  relating  thereto,  or  in,  to,  or  under,  11 
letters  patent  which  may  be  granted  to,  or  at  any  ti 
may  belong  to  me,  relating  to  any  or  all  of  s 
inventions  or  improvements;  and  I  do  hereby  a 
givo  and  grant  to  said  Jay  Gould  full  (and  irrevocnb 
power  and  authority  to  give  or  grant  any  license 
licenses  in,  to,  or  under  any  or  nil  ot  said  letters  pate 
or  in  or  relating  to  any  or  all  of  said  inventions 
improvements. 

And  I  do  hereby  also  givo  and  grant  unto  said  J 
Gould  full  (and  irrevocable)  powor  and  authority  to 
and  porform  all  necessary  acts  in  and  about  the  int 
agemout  of  my  interest  in  said  invention  or  imnroi 


meals  and  lottors  patent,  and  ■  ench  of  thorn,  and 
relating  to  any  business  that  may  aviso  there 
hereby  authorising  and  empowering  him  to  mak 
meet  business  engagements  and  liabilities,  and 
and  perform  each  and  every  not  which  I  or  my  1 
tors,  administrators  or  assigns  might  or  could  do  i 
lion  to  the  management  of  all  business  tninsu 
relating  to  said  inventions,  improvements  or 
patent  or  any  of  them. 

And  I  hereby  authorize  and  empower  the  said  1 
;o  demand,  sue  for,  collect,  receive  and  givo  a 
mice  and  releases,  in  my  name  or  otherwise,  I 
mills  of  money,  debts  and  demands  whatever, 
ire  or  shall  be  due,  owing  or  belonging  to  111c, 
ained  from  me,  by  any  person  or  persons,  whomse 
ind  also  at  any  time  to  commence  and  prosecute 
nd  all  suits  or  actions,  at  law  or  in  equity,  ii 
lame,  for  the  infringement  of  said  letters  patent 
Iso  to  sign  my  name  to  any  and  all  papers  nece 
ir  commencing  and  carrying  on  said  suits  or  ac 
nd  he  shall  have  power  (full  and  irrevocable),  i 
amc,  to  do  and  perform  every  act  necessary  and 
cr,  in  and  about  said  suits  and  actions. 

I  do  also  hereby  authorize  and  empower  the 
ay  Gould  to  appoint  any  substitute  or  substitut 
is  discretion,  to  do  and  perform  all  or  any  of  the 
eroby  authorized,  and  I  do  in  such  case  hereby 
!r  upon  such  substitute  or  substitutes  each  and  1 
ic  powers  which  I  have  hereby  conferred  upon 
ly  Gould,  or  which  may  by  him  bo  delegated  to 
ibstitutc  or  substitutes. 

In  witness  whereof  I  have  hereunto  set  my  hand 
al  this  fourth  day  of  January,  one  thousand  ( 
indued  and  seventy-live. 

Thomas  A.  Edison,  [seai 

In  presence  of 

[The  words  “  full "  and  “  irrevocable  ”  interlincc 
re  execution.] 

Olin  J.  Clanson, 

Abthuk  Kinnieb. 


Statu  or  New  York,  )  ' „ 

City  ami  County  ot  Now  York. j  SS- 
On  tliis  fourth  tiny  of  Jummry,  1875,  before  me  [>cr- 
sonnlly  eiime  Thomas  J.  Edison,  to  mo  known,  and 
known  to  be  the  individual  described  in  and  who  exe¬ 
cuted  the  foregoing  instrument,  and  acknowledged  that 
lie  executed  the  same  for  the  purpose  therein  men¬ 
tioned. 

Own  J.  Ci, anson, 

[SEAI‘]  Notary  Public, 

N.  Y.  Ca 

Application  or  Gkoiiok  Harrington. 

"Washington,  .Tan.  28d,  1875.  - 
To  the  Commissioner  of  Patents: 

Your  petitioner,  a  citizen  of  AVnshinglou  City,  Dis¬ 
trict  of  Columbia,  prays : 

That  letters  patent  may  be  granted  to  Tbos.  A. 
Edison,  of  the  city  of  Newark,  State  of  New  Jersey, 
ami  to  your  petitioner,  as  bis  assignee,  for  the  inven¬ 
tions  described  as  follows : 

,  . . provemeuts  in  Duplex  Telcgmpbs,  .lated 

August  10,  187-1,  and  tiled  September  1,  187-1. 

.  No.  95,  ditto,  ditto,  ditto,  ditto. 

98,  ditto,  ditto,  ditto,  ditto. 

97,  ditto,  ditto,  ditto,  ditto. 

“  °8,  ditto,  ditto,  ditto,  ditto; 

.  11  99,  ditto,  ditto,  ditto,  ditto. 

“  10 ditto,  ditto,  ditto,  ditto. 

28tb  1874 liUO’ <ktCtl  ^  14l,1>  1874>  antl  filed  Beet 
The  assignment  and  power  of  attorney  to  your  pc- 
l1u,y  ^cordc.1  in  the  Patont  Office,  May 
btlh  1871,  in  Liber  U  18,  p.  -112,  of  Tmnsfera  of  Patents, 
Your  petitioner  therefore  prays  that  the  lcltcis  patent 
lor  said  inventions  mayissuo  to  himself  uud  said  Edison, 


i  the  proportionate  interests  of  two-thirds  to  hi 
id  one-third  to  said  Edison,  as  provided  in  said  ] 
!  attorney  and  assignment 

Very  respectfully, 

George  Harmnot 


Letter  op  Thomas  A.  Edison. 

Newark,  N.  J.,  Jan.  28d,  18 
mimissioncr  of  Patents : 

Sir — There  are  on  tile  in  your  olliee  certain  ap 
ms  for  patents  in  my  name,  as  sole  inventor,  ni 
aiied  with  a  request  to  issue  the  patents, 
lowed,  to  myself  and  George  B.  Prescott 
I  made  this  arrangement  with  Mr.  Prescott  uml 
mucous  impression. 

On  tlic  1st  October,  1870, 1  made  a  copartnc 
ntmet  with  Mr.  Georgo  Harrington,  and  on  tin 
|>ril,  1871,  in  furtherance  thereof,  1  made  to  hii 
ligament,  coupled  with  an  irrevocable  power  of 
y,  reciting  the  main  provisions  of  the  contract, 
which  are  still  in  full  force  and  effect,  whereb 
ulrol  of  these  inventions  wits  placed  in  the  hail 
it  Harrington. 

Under  and  113-  virtue  of  this  power  ot  attorney 
ligament  therein,  Mr.  Harrington  claims  titl 
;sc  inventions,  and  objects,  ami  has  objected,  tc 
nation  from  the  said  assignment  and  power  o 
ne3'.  I  therefore  withdraw  1113'  request  for  the 
patents  for  Duplex  and  Qi  1  1 1  t  ssi 
ison  and  Prescott,  and  unite  with  George  Uar 
in  his  petition,  this  dty  filed  in  your  office,  rcq 
;  the  issue  of  the  letters  patent  to  Geo.  Hnrrin 
1  nyself,  iu  the  proportions  set  forth  in  the  powi 
nney  and  assignment  of  April  4th,  1871,  uud 
itrnct  therein  recited. 

Respectfully  yours, 


■Appeal  of  Edison  and  Harrington  from  the 
(Decision  of  the  Commissioner  of  (Patents 
of  March  soth,  i8j j,  to  the  Hon:  the  Sec¬ 
retary  of  the  Interior. 


Argument  for  Mr.  Edison. 


In  flic  printed  argument  of  Messrs.  Colliding  and  low- 
cry,  on  “  die  just  limits  of  die  Secretary’s  legal  power  over 
decisions  of  the  Commissioner  of  Patents,”  it  is  conceded 
(pp.  9, 10)  that  it  is  the. duty  of  the  Secretary  to  refuse  his 
signature  to  a  patent  which  the  Commissioner  hns  ordered 
to  be  issued,  whenever  the  Commissioner  hns  exceeded  his 
jurisdiction — that  the  Secretary  lias  “  a  practical  veto  power, 
to  he  exercised  in  case  of  fraud  or  excess  qf  jurisdiction.” 

We  proposo  to  show  that  tho  Commissioner  hns  in  this 
enso  exceeded  his  jurisdiction. 

1.  Tho  Patent  Act  does  not  authorize  the  issuo  of  a  pat¬ 
ent  jointly  to  the  inventor  and  an  assignee  of  a  part  inter¬ 
est  in  tho  invention,  and,  therel'oro,  a  pntent  enunot  bo 
legally  issued  in  that  form,  unless  by  tho  express  unrevoked 
authority  of  tho  inventor  at  tho  timo  of  such  issue — which 
authority  was  wanting  in  this  case. 

2.  Tho  act  does  not  authorize  tho  issue  of  a  patent  to 

joint  assignees,  wlioro  thoir  interests  under  tho  assignment 
lire  not  tho  same  ns  tho  joint  patent  itself  would  import 
thorn  to  bo  on  its  face.  And  no  nssigneo  claiming  under 
au  assignment  sul’niodo  can  demand  the  issuo  of  tho  pntent 
to  himself  by  tho  moro  forco  of  such  assignment.  . 


3.  l’lio  Commissioner  cannot  issue  n  patent  to  the  in- 
venlor  and  an  assignee  jointly,  when  tliero  is  no  aj>j)lica- 
lion  pending  in  the  Patent  Ofiico  for  such  issue. 

The  pending  application  boing  for  a  patent  to  Edison 
and  Harrington  jointly  (the  former  application  having  been 
withdrawn),  the  Commissioner  has  no  jurisdiction  to  issue 
the  patent  to  Edison  and  Prescott. 


As  to  the  Issue  of  a  Patent  where  a  Share  of 
the  Invention  or  some  Partial  Interest  in 
it  has  been  Assigned. 

In  tho  argument  boforo  tbe  Commissioner  of  Patents, 
Mr.  Doubling  took  the  objection  that  tho  assignment  of  4th 
April,  1871,  to  Harrington,  could  not  possibly  entitle  him 
to  demand  the  issue  of  the  patents  to  liinisolf  and  Edison 
jointly,  because  the  statute  authorizing  the  issuo  of  a  patent 
to  an  assignee  is  eon  fined  to  a  case  where  the  whole,  and 
not  a  part  merely,'  of  tho  invention  is  assigned. 

This  objection  was  not  noticed  by  the  Commissioner, 
although,  ill  the  concluding  paragraph  of  his  opinion,  1m 
adverts  to  tho  question  “  whotlicr  tho  assignment  to  Pres¬ 
cott  is  in  such  form  ns  to  authorize  tho  Commissioner  to 
issue  tho  patent  to  Edison  and  Prescott  as  assignees  of  tho 
former.”  Ho  does  not  state  what  objection  (if  any)  was 
mndo  to  tho  form  of  that  assignment,  but  says  it  is  in  tho. 
words  of  tho  form  sent  out  by  the  Patent  Office,  and  that 
should  bo  doomed  bnffleient,  “  in  the  absence  of  any  decision 
by  a  higher  tribunal  invalidating  pntonts  thus  granted.” 

It  is  not  probablo  that  tho  Courts  will  decide  that  tho 
issue  of  a  patent  to  nii  inventor  and  another  as  his  nssigneo 
of  part  of  the  invention  is  invalid  wlion  it  is  so  issued  at  tho 
inventor’s  request,  coupled  with  that  of  tho  nssigneo.  If 
may  bo  presumed  that  it  hits  never  been  dono  without  such 
request. 

Mr,  Conkling  refers  to  a  supposed  chango  made  by  tho 
Revised  Statutes  in  the  wording  of  tho  Patent  Law,  relat¬ 


ing  to  tho  isano  of  pntonts  to  assignees.  Ho  snys  that  tho 
revision  has  changed  “assignees”  to  “assignee;”  but  adds 
that  the  singular  may  bo  construed  to  mean  plural.  lie  is 
mistaken  as  to  tho  revision,  for  tho  act  of  1870,  see  33,  has 
the  word  “  nssigneo,”  and  tho  revision  is  tho  same.  The 
word  “nssigneo”  may,  however,  ho  read  to  menu  “nssigneo 
orassignecB” — this  not  being  like  a  penal  statute,  which  is 
to  he  construed  strictly.  When  tho  whole  of.  tho  title  to 
the  invention  m  assigned  to  two  or  more,  that  titlo  is  vested 
in  an  “assignee,”  within  the  meaning  of  tho  net. 

Mr.  Conkling  refers  to  the  opinion  of  Attorney  Gonernl 
Mason,  to  whom  the  question  was  referred  by  the  Secretary 
of  State,  ns  to  the  meaning  of  the  clause  in  the  act  of  1S37 
in  relation  to  the  issuo  of  patents  to  assignees.  And  Mr. 
Conkling  also  refers  to  the  opinion  of  Attorney  General 
Black  on  tho  same  question,  to  sustain  the  point  that  no 
statute  authorizes  the  issuo  of  the  pntonts  to  Harrington 
and  Edison,  under  the  assignment  of  1871,  because  in  that 
instrument,  in  any  view  of  tho  case,  there  is  not  an  assign¬ 
ment  of  tho  whole,  but  only  an  assignment  ot  two-thirds  oi 
the  inventions,  the  remaining  one-third  being  in  Edison, 
tho  assignor. 

Tho  distinction  botween  an  assignment  by  Edison  ot 
one-third  to  himself  and  his  retention  of  one-third,  has  not 
a  very  substantial  appearance.  And  if  tho  assignee  claim¬ 
ing  the  issue  of  the  patent  to  himself  must  bo  assignee  ot 
the  whole,  then  Prescott  had  no  standing  before  tho  Com¬ 
missioner.  Now,  Mr.  Conkling’s  argument  is  to  tho  effect 
Hint  a  patent  cannot  bo  issued  to  the  nssigneo  of  part  of  the 
interest  in  tho  invention— that  the  assignment  must  bo  of 
the  wiiolo  of  the  interest.  And  ho  insists  on  a  formal  dit- 
fereneo  between  tho  assignment  of  1871  to  Harrington  and 
that  of  1874  to  Prescott,  the  latter  boing  an  assignment  to 
Prescott  of  one-half,  and  an  assignment  of  the  other  halt  to 
tho  assignor,  Edison, .whereas  the  assignment  to  Hariing. 
ton  was  simply  of  two-thirds,  leaving  one-third  in'  Edison. 

Although  tho  assignee  of  a  part  of  nil  invention  holding 


under  nil  assignment  iiindo  after  the  invention  was  per¬ 
fected  and  before  the  issue  of  tho  patent,  holds  the  legal 
title  to  such  portion  of  the  invention,  and  will  hold  a  cor- 
rcspoiiding  title  in  tho  patent,  it  docs  not  follow  that  lie  is 
entitled  to  the  issue  of  the  patent  in  his  own  name  jointly 
with  that  of  tho  inventor.  The  right  of  an  assignee  to  de¬ 
mand  a  patent  in  his  own  name  was  first  given  hy  the  Act 
of  1837,  hut  heforo  the  passage  of  that  act  tho  assignee  of 
an  invention  heforo  patent  granted,  but  after  tho  invention 
was  perfected,  took  the  legal  title  to  tho  extent  of  the  as¬ 
signment,  whether  in  tho  whole  or  in  port  (Gaylor  v.  Wil¬ 
der,  10  How.  477). 

The  Rules  of  Practice  in  the  Patent  Office. 

Rule  2.  “  In  caso  of  an  assignment  of  the  whole  inter¬ 
est  in  tho  invention,  the  patent  will  issue  to  the  assignee 
upon  his  request ;  and  so,  if  the  nssiguce  holds  an  undi¬ 
vided  part  interest,  tile  patent  will,  upon  his  request ,  issue 
jointly  to  him  and  the  inventor;  hut  the  assignment  must 
first  have  been  entered  of  record,  and  nt  a  day  not  later 
than  the  date  of  the  payment  of  the  filial  fee,  and  the  appli¬ 
cation-  must  he  duly  made  and  tho  specification  sworn  to 
by  tho  inventor.” 

Rule  09.  “  When  an  assignment  of  the  wliolo  or  an 
undivided  interest  in  an  invention  has  been  made  and  duly 
entered  of  record  in  tho  Patent  Offico,  tho  patent  will,  upon, 
tho  request  of  the  assignee,  issue  directly  to  him,  or  if  ho 
hold  but  a  part  interest,  to  him  and  the  inventor  jointly.” 

Rule  100.  “  In  every  enso  whore  it  is  desired  that  tho 
patent  shall  thus  issue  to  an  assignee,  tho  assignment  must 
bo  recorded  in  the  Patent  Office,  nt  n  date  not  later  Ilian  . 
tho  day  on  which  tho  final  fee  is  paid.” 

Rule  101.  “'Wiion  tho  patent  is  to  issue  in  the  iiauio  . 
of  tho  assignee,  tho  entire  correspondence  will  bo  with  him 
or  his  authorized  agent.” 

These  rules  do  not  recognize  the  distinction  drawn  by 
Mr.  Conkling  between  tho  retention  of  a  share  by  the  as¬ 


signor  and  an  assignment  of  such  slinro  hj  himself  to  him- 
tdf. 

There  may  ho  no  objection  to  tho  issue  of  a  patent  to 
the. inventor  and  others  joined  with  him,  when  tlint  is  done 
by  the  full  and  unrevdked  authority  of  tho  inventor.  That 
appenrs  to  bo  the  practice  of  the  Patent  Olficc. 

.The  rules  of  tho  Patent  Offico  do  not  ignore  the  point 
tlint  an  assignee  of  a  part  of  tho  patent  cannot  demand  the 
issue  of  a  patent  to  himself  and  tho  inventor  jointly  under 
the  provisions  of  the  act  giving  an  nssigneo  the  right  to  the 
patent.  Those  rules  are  intended  merely  to  provide  that 
tho  patent  may  bo  issued  to  tho  inventor  and  an  assignee 
of  a  part  of  tho  invention  jointly  when  not  only  the  as¬ 
signee,  but  the  inventor  also  requires  such  issue  in  that 


The  Rules  of  the  Patent  Office  are  binding  in  certain 
Rises  (see  Lnw’s  Digest,  027,  title  “  Rules  of  Patent  Office  ), 
but  they  are  of  no  weight  in  this  question,  tho  Patent 
Office  having  no  authority  to  determine  what  are  the  loga 
rights  of  an  assignee  of  a  part  of  an  invention. 

Revocation  of  tho  Authority  to  Issue  the  Pat¬ 
ent  to  Edison  and,  Prescott. 

Prescott’s  counsol  linvo  assumed  that  as  Edison  filed  an 
application  for  a  patont,  and  made  tho  oath  required,  and 
oxecutcd  an  assignment  to  himself  and  Prescott,  which  was 
duly  put  on  record,  all  tho  requisitions  of  tho  law  wore 
complied  with  which  wore  made  conditions  precctlen 
tho  establishment  of  his  right  ns  joint  assignee,  and  conse¬ 
quently,  that  Prescott  acquired  a  vested  right  to  tlio  is 
of  the  patent  undor  tho  assignment  in  tho  form  presen  e  , 
and  could  not  bo  divested  of  that  by  the  act  of  Edison 


Wo  maintain,  on  tlio  contrary,  thnt  Edison  could  with¬ 
draw  the  authority  which  ho  had  given  to  the  Patent 
Office — being  linblc,  of  course,  to  an  action  by  Prescott  if 
such  withdrawal  should  prove  to.  bo  without  good  cause. 

Tlio  question  is  whotber  the  nssigneo  of  pnrt  of  a  patent 
can  demautl  the  issuo  of  the  patent  to  himself  jointly  with, 
tlio  invontor  when  tlio  invontor  objects  to  it  at  the  time  of 
tho  proposed  issuo,  whatever  may  hnvo  been  his  wishes 
previously. 

Wo  concede  that  although  tho  assignment  is  not  nintlo 
to  a  singlo  nssigneo  but  to  several  persons,  tlioy  am  jointly 
demand  tho  issuo  of  the  patent  to  them  after  the  inventor 
lms  made  tho  ontli  and  filed  tho  application  for  the  patent 
as  required  by  the  net.  But  all  the  assignees  must  join  in 
that  application.  If  one  of  them  withdraws  his  application 
for  the  patent,  it  cannot  be  issued. 

Tho  word  •'  may,”  in  section  33  of  the  Act  of  1S70, 
menus  that  if  tho  assignee  applies  for  tho  pntent  it  may  ho 
issued  to  him,  otherwise  it  will  he  issued  to  tho  inventor. 

That  section,  howover,  does  not  spent  of  tho  “  request  ” 
referred  to  in  tho  Rules — tlio  request  by  tho  assignee  thnt 
the  pntent  shall  bo  issued  wholly  or  partly  to  him  (as  tlio' 
.case  may  bo).  Tho  net  speaks  only  of  tho  application  by 
the  inventor  for  tlio  patent,  accompanied  by  his  oath. 
There  must  ho  an  application  by  tho  inventor  for  tlio  pat-  . 
ent  actual!’/ pending,  and  the  “  request”  mentioned  in  tlio 
Rules  nf  the  Patent  Office  (Rules  2  and  00),  is  necessary  to 
set  tho  Pntent  Offico  in  motion  in  favor  of  tho  assigaeo, 
and,  of  course,  suqh  request  may  bo  withdrawn. 

In  the  present  case,  tho  application  for  tho  joint  patent 
was  withdrawn  by  Edison  giving  notice  of  such  withdrawal 
to  tho  Commissioner  by  letter  dated  January  23d,  lb76. 
Another  application,  dated  tho  saino  day,  was  filed  by  Har¬ 
rington  for  patents  to  bo  issued  to  himself  and  Edison. 
Thoro  is  no  application  on  file  for  tho  issuo  to  Edison  nloao, 
and  there  is  no  subsisting  application  on  which  tho  patents 
can  be  issued  to  Edison  and  Prescott.  Consequently,  tho 


patents  cannot  bo  legally  issued  to  Edison  and  Prescott 

■  Where  thoro  nro  two  assignees,  if  they  will  not  join  in 
an  application  for  the  issue  of  the  pntent,  or  if  after  they 
have  inndo  tho  application  one  of  them  revokes  his  request, 
the  patent  must  bo  issued  (if  nt  all)  to  the  inventor.  And 
wlton  so  issued,  it  will  inure  for  the  benefit  of  the  assignees 
according  to  their  respective  interests,  and  they  will  take 
the  legal  title  to  the  patent,  so  as  to  bo  nblo  to  maintain 
actious  for  infringement. 

With  respect  to  the  revocation  by  Edison  of  his  request 
to  hnvo  tlio  patents  issued  to  himself  and  Prescott,  it  is  very 
different  from  an  effort  on  tho  pnrt  of  the  inventor  to  defeat 
tho  legal  effect  of  nn  assignment  of  a  patent,  or  of  part  of  it. 
Of  course,  timt  cannot  bo  done. 

Tiie  opinions  of  tlio  Attorneys  General  referred  to  by 
Mr.  Conkling  nro  clearly  correct.  A  patent  cannot  bo  is¬ 
sued  to  nn  nssigneo  and  the  inventor  jointly,  unless  indeed 
by  the  consont  and  authority  of  the  latter.  And  it  follows 
that  if  siteli  consent  bo  given,  it  may  be  withdrawn  before 
it  is  acted  upon. 

This  right  results  from  the  very  nature  of  tho  request. 
Whenever  ono  is  requested  to  perform  an  net  for  the  bene¬ 
fit  of  another,  tho  request  may  bo  withdrawn  before  it  is 
heted  upon.  It  is  like  tho  dissolution  of  an  agency  by  the 
revocation  of  tho  principal,  which  may  he  exorcised  at  the 
mere  will  and  pleasure  of  tho  latter,  for,  as  observed  in 
Story  on  Agency,  see.  403,  “  sinco  the  authority  is  conferred 
by  his  uioro  will,  and  is  to  be  executed  for  his  own  benefit 
and  his  own  purposes,  the  agent  enniioL  insist  upon  acting 
when  tha  principal  has  withdrawn  his  confidence,  and  no 
longer  desires  his  aid.  This  is  so  plain  a  doctrine  ol  com- 
mon  souse  and  common  justice,  thnt  it  requires  no  illustra¬ 
tion  or  reasoning  to  support  it.”  Sec,  also,  2  Kent’s  Com. 

Tho  right  of  Edison  to  revoke  his  authority  to  issuo  tho 
patent  to  himself  and  Prescott  jointly  is  not  nilbcted  by  tho 


fact  that  Prescott  may  have  paid  the  patent  fees  on  the  ap¬ 
plication  for  the  patont,  and  the  fees  of  patent  agents,  and 
that  in  the  contract  of  19th  August,  1S74,  Edison,  for  a 
sufficient  consideration,  agrees  to  authorize,  and  docs  au¬ 
thorize,  the  Patent  Offico  to  issno  tho  patent  jointly  to 
himself  and  Prescott.  Edison  may  bo  linkle  in  damages 
fora  breach  of  contract  in  revoking  tlio  authority,  but  the 
authority  of  the  Commissioner  does  not  tho  less  fail  when 
Edison  withdraws  it.  The  question  tlion  is  for  the  eonrts 
to  decide  between  Edison  and  Prescott,  whether  the  author¬ 
ity  has  been  rightfully  withdrawn.  If  wrongfully  with¬ 
drawn,  Edison  may  bo  responsible  for  damages. 

The  Patent  Office  hnving  no  legal  authority  under  the 
act  to  issue  a  patent  to  tho  inventor  and  his  assignee  of  a 
partinl  interest,  such  issue  is  entirely  dependent  on  an  au¬ 
thorization  of  the  inventor,  irrespective  of,  and  in  addition 
to,  the  assignment.  It  follows,  therefore,  tlint,  if  that  au¬ 
thority  bo  withdrawn,  tho  patent  cannot  bo  so  issued.  The 
assignment  is  tho  only  instrument  tlint  is  binding  in  the 
Patent  Office. 

Tho  authority  of  the  Patent  Office  to  issue  the  patent 
to  an  assignee  depends,  not  on  the  assignment  alone,  hut 
on  the  application  of  the  inventor  for  the  pntent,  and  the 
request  of  the  assignee  for  the  issue  of  tho  pntent  to  himself, 
which  is  not  referred  to  in  tlio  act,  but  which  is  necessarily 
implied. 

Opinions  of  > Attorneys  General  Mason  and  Jitach  ■ 

The  opinions  of  Attorney  General  Mason  and  Attomoj 
General  Black  wero  given  upon  tho  act  or  1837,  which  au¬ 
thorized  the  issue  of  a  patont  to  “  assiynces.” 

The  opinion  of  Attornoy  General  Mason,  July  7th,  1845 
(Opinions  of  Attorneys  Gonoml,  vol.  4,  p.  899):  “Patent* 
for  inventions  cannot  issno  to  inventors  and  assignees  of'* 
partial  interest  jointly,  but  may  issuo  to  assignees  of  the- 
wholo  interest.  No  provision  1ms  boon  mndo  for  the  issue 
of  a  patent  for  a  part  of  an  invention  to  the  inventor  anil 
for  tho  other  part  to  liis  assignee.” 


“Tho  act  of  1836,  sec.  11,  made  patents  assignable  in  lnw 
either  ns  to  the  whole  interest  or  any  undivided  part  thereof, 
and  required  the  assignment  to  bo  recorded.  This  power 
of  assignment,  however,  applied  only  to  the  patent,  and  not 
tlio  right  to  sue  ont  the  patent.” 

:  “  The  practico  under  this  not  (the  act  of  1837)  has  been 
to  coniine  it  to  eases  within  its  torms — to  cases  of  assign¬ 
ment  of  the  whole  interest.  It  appears  to  mo  very  clear 
that  tho  section  was  framed  in  view  of  such  ensos  only.” 

lie  further  Observed  that  the  not  of  1836,  see.  11,  em¬ 
braces  cases  of  pnrtinl  assignments,  but  that  the  6th  seetiou 
of  tho  act  of  1837  is  confined  to  eases  of  assignment  of  the 
whole  right,  and  he  thinks  that  a  patent  issued  otherwise 
might  bo  hold  contrary  to  lnw.  “  The  net  of  1837  does  not 
impair  the  equitable  rights  which  an  assignee,  before  issue 
of  patent,  had,  nnd  his  interests  will  be  protected  by  tho 
Courts.” 

Opinion  of  Attorney  General  Black,  November  2Sth, 
1859;  Opinions  of  Attorneys  General,  vol.  9,  p.  403,  fur¬ 
nished  to  tho  Secretary  of  State. 

Tlio  inventor  Agcr  npplied  for  tho  patent  to  bo  issued 
to  himself.  "Woolf  and  Jordan,  assignees  of  Agor,  claimed 
the  issue  to  them. 

Tho  opinion  is :  “  Whore  tho  inventor  of  n  new  machine, 
before  a  pntent  issues,  makes  a  full  nnd  complete  assign¬ 
ment  of  all  his  right  to  another  porson,  tho  nssigneo  may 
have  the  patent  issned  in  his  own  name.” 

"  But  where  tho  transfer  or  assignment  of  tlio  inventor’s 
right  is  only  partinl,  although  tho  part  oxeopted  bo  very 
small,  I  do  not  think  that  the  nssigneo  lias  any  claim  to  tho 
■  patent.  He  must  allow  it  to  go  out  in  the  name  of  tho  in¬ 
ventor,  and  bo  held  by  him  in  trust  for  tho  uso  of  tho  ns- 
signoc,.to  tho  extent  of  the  equities  which  ho  lias  by  virtue 
of  his  contract.” 

In  Snydam  v.  Day  (2  Blatch.  20)  it  was  hold  that,  un- 
(•er  the  Pntent  laws  of  tho  United  States,  an  nssigneo  of  a 


patent  must  lie  regarded  ns  acquiring  Ins  title  to  it  with  a 
right  of  action  in  his  own  name  only  liy  force  of  the  statute. 

In  Law’s  Trcntiso  on  Patents,  p.  IfiO,  ami  in  his  Digest 
of  Patent  Cases,  these  opinions  of  Mason  and  Black  are  re¬ 
ferred  to,  and  no  mention  is  made  of  any  adverse  authority. 

It  will  bo  observed  that  tlio  act  makes  it  a  condition 
precedent  to  the  issue  of  a  patent  to  an  assignee  tlmt  the 
assignment  shall  bo  recorded.  And  the  only  assignment 
which  it  authorizes  to  lie  recorded  is  mi  assignment  embrac¬ 
ing  the  whole  interest. 

The  Patent  Act  contemplates  a  written  instrument, 
signed  by  tlio  owner  of  the  patent,  nnd  duly  recorded  in 
the  Patent  Office,  ns  necessary  to  vest  the  legal  titlo  in  tlio 
purchaser  (Ashcroft  v.  Walworth,  2  Oft'.  Gnz.  Pat.  540;  5 
Fisher,  528;  nnd  see  Baldwin  v.  Sibley,  1  Clilf.  150). 

If  there  he  mi  assignment  of  one-third  of  an  invention 
on  the  condition  that  ucithor  should  nliennto  without  the 
consent  of  the  otlior,  nnd  the  patent  should  bo  issued  to  the 
assignee  nnd  inventor  jointly  (tlio  usual  form),  the  legal 
rights  of  the  patentees  under  the  patent  would  not  corre¬ 
spond  with  their  actual  rights  under  the  contract  between 
them.  Under  tlio  patent,  they  would  bold  in  equnl  moieties, 
nnd  either  of  the  patentees  could,  without  tlio  assent  of 
the  other,  give  full  titlo  to  anybody  to  uso  the  invention 
(Olum  v.  Brower,  2  Curtis,  524:).  "When,  howover,  the  ill; 
ventor  nnd  assignee  of  part  join  in  asking  for  tlio  issue  of 
the  patent  to  themselves  jointly,  they  are  contont  to  bo  left 
to  execute  further  assurances  accurately  defining  their  re¬ 
spective  rights,  and  limiting  their  respective  actions  in  re¬ 
gard  to  the  patent.  But  certainly,  without  such  authority, 
the  pntont  could  not  be  so  issued. 

As  to  tlio  Legal  Effect  of  an  Assignment  by 
an 'Assignor  to  Sims  elf. 

Tlio  distinction  contended  for  botwcon  tlio  retention  of 
a  part  of  the  invention  by  tlio  inventor  and  an  assignment 
of  it  to  himself  cannot  bo  sustained. 


If  ono  desires  to  niuko  another  joint  owner  witn  uim- 
tclf  of  a  piece  of  property,  ho  conveys  the  partial  interest 
io  the  other  party ;  ho  dees  not  convey  his  own  share  to 
himself — that  ho  retains.  Or  he  conveys  to  a  third  party 
in  trust  to  recoil voy  pnrt  to  himself,  nnd  to  transfer  tlio  re¬ 
mainder  to  tlio  third  pnrty. 

It  is  n  solecism  to  speak  of  nil  assignment  by  ono  to 
himself.  Sco  definitions  of  ‘‘-assignment  ”  nnd  “  convey- 
iincc,”  AYlinrton’s  Law  Lexicon—1 “  ‘  Assignment,’  n  trans¬ 
ferring  or  sotting  over  to  another  the  interest  which  a 
person  possesses  in  anything  (2  Bln.  Com.  320).”  “  ‘  Con¬ 
veyance,’  an  instrument  which  transfers  property  from  ono 
person  to  nnothcr.” 

Suppose  a  patent  to  bo  owned  by  a  married  woman, 
will  the  assignment  of  that  pntont  by  the  husband  to  him¬ 
self  be  a  reduction  of  tlio  patent  to  his  possession  and  own- 
crsliip  60  ns  to  deprive  the  wife  of  her  right  to  it  iu  cose  o 
her  surviving  her  husband  ?  Certainly  not.  It  would  bo 
no  assignment  nl  all ;  it  would  lie  a  merely  nugatory  act. 

4  Kent’s  Com.  134,  “The  husband,  upon  marriage, 
becomes  possessed  of  the  chattels  real  ot  the  wife,  as  eases 
for  years,  and  the  law  gives  him  power  without  her  to  sell, 
assign,  mortgage,  or  otherwise  disposo  of  tlio  snmo  ns  lie 
pleases  by  uny  act  in  his  lifetime.” 

If  he  disposes  of  a  part  interest  in  the  term,  that  would 
not  deprive  the  wifo  of  her  right  to  the  remainder  ns  sur¬ 
vivor.  And  query  whether  the  partial  assignment  would 
bo  cil'ectiinl  kt  all  as  against  her.  -  . 

The  practice  of  conveyancers  when  the  assignor  desires 
to  retain  an  ihtorest  in  tlio  thing  assigned,  under  a  new 
title  «»  aesifjnee,  is  to  make  an  assignment  to  a  trustee. 
Tims,  when  a  person  entitled,  in  right  ot  his  wi  e, 
chattel  real  wants  to  rcduco'it  into  possession  so  as 
off  bis  wife’s  right  as  survivor,  he  makes  an  assignment  to 
a  trustee  in  trust,  to  reassign  (Coppmger’s  Precedents  in 
Conveyancing,  title  “  Assignment ;  ”  1  Orabb  s  Piet.  42  ). 

A  change  has  recently  been  made  iu  England  by  act  o 


Parliament  in  respect  to  tho  form  of  assignments  of  per¬ 
sonal  property  and  chattels  real  where  it  is  dosired  that  tho 
assignor  shall  Imre  or  retain  some  interest.  This  serves  to 
show  that,  but  for  such  cnactmont,  there  could  bo  no  rnlid 
assignment  by  ono  to  himself. 

Woodfall’s  Landlord  and  Tenant,  10th  Anioricnn  edi¬ 
tion.  1871,  pago  202. 

“By  22  it  23  Viet.  chap.  35,  sec.  21,  ‘Any  person  shall 
lmvo  power  to  assign  personal  property  now  by  law  assign¬ 
able,  including  chnttols  real,  directly  to  himself  and  another 
person,  or  other  persons  or  corporation,  by  the  like  means 
ns  bo  might  assign  tho  same  to  another.’  Therefore, 
upon  the  appointment  of  a  new  trii6tco  of  leaseholds  and 
personal  estate,  the  continuing  trustees  may  assign  tho 
trust  property  direct  to  thomsolves  and  the  new  trustees 
jointly  upon  the  trusts  of  tho  settlement,  whereas  formerly 
an  assignment  und  reassignment  wero  necossnry  to  effect 
this  object.” 


Ho  net  authorizing  the  issue  of  .n  patent  to  nn  assignee 
of  nn  invention,  does  not  apply  to  a  enso  when  tho  assign¬ 
ment  is  not  absolute,  but  is  aiib  modo  only.  There  is  nn 
established  distinction  between  nn  absolute  assignment  oi 


ter  enso,  the  assigiieo  having  only  a  mb  mot/o  assignment, 
is  not,  in  legal  contemplation,  nn  assignee  of  tho  patent, 
and,  therefore,  cannot  bring  nn  action  or  suit  ngniuet  in¬ 
fringers  (see  Brooks  v.  Bynin,  2  Story,  643 ;  'Washburn  v. 

-  Gould,  8  Story,  102 ;  Troy  Factory  v.  Corning,  14  llow. 
210 ;  Curtis  on  Patents,  see.  105). 

In  the  present  case  tho  assignment  of  a  moioty  of  tho 
invention  by  Edison  to  Prescott  is  a  qualified  assign- 
meat;  i.e.,  it  does  not  vest  in  Prescott  tho  right  ’and  title 
ot  an  absolute  assignee, 'but  provides  that  ho  shall  have  no 
power  to  dispose  of  tho  thing  assigned  without  Edison’s 
authority.  Such  a  modified  assignment  or  partial  and 


qualified  disposal  of  a  shnro  of  nn  invention,  lncks  one  of 
Unessential  qualities  of  ownership,  viz.,  thoy'iM  disjponendi , 
and  cannot  authorize  the  issuo  of  a  patent  on  the  faco  of 
which  Prescott  would  have  the  lognl  title  jointly  with  Edi¬ 
son,  absolutely  without  any  qualification  whatever,  and 
bv  virtue  of  which  ho  (Prescott)  could  grant  valid  licenses. 

;  It  may  be  said,  howovor,  that  Edison  would  not  bo 
prejudiced  by  tho  fact  that  tho  patent,  on  its  face,  makes 
Prescott  absoluto  owner  of  n  moiety  of  the  patent,  bccauso 
the  assignment  of  19th  August,  1874,  to  Prescott,  which  is 
recorded,  shows  the  contrary.  That  restriction  depends 
upon  h  mere  contract.  And  it  raises  tho  question  whether' 
the  record  of  that  instrument  is  notice  ns  to  which  it  is  to 
boobserved  that  tho  recording  of  an  assignment  of  an  in¬ 
tention  which  has  been  already  perfected,  is  recognized 
and  implied! g  authorised  by  the  provision  of  the  patent 
Iswwliich  requires  it  to  be  recorded  before  the  patent  can 
bo  issued  to  tho  nssignee.  Tho  act  (sec.  33)  does  not  in  any 
way  recognize  nn  assignment  of  a  share  of  an  invention, 
nor  docs  it  recognize  nn  assignment  of  tho  whole  of  the  in¬ 
vention  subject  to  restrictions  and  qualifications.  Such  an 
assignment  docs  not  entitle  tho  nssigneo  to  demand  the  pat- 

Any  purchaser  from  Prescott,  if  tho  patent  should  be 
.  feoed  to  him  and  Edison  jointly,  might  rely  on  the  patent, 
sod  would  be  undor  no  obligation  to  search  the  records  of 
tbc  patent  office  for  contracts  affecting  Prescott’s  title,  as 
%n  by  tho  patent,  and  limiting  tho  manner  in  which  the 
ownership  of  the  cxpccto  1  patent  should  bo  exercised. 

.'  '•Tho  recording  of  nn  instrument  not  authorized  by  law 
to  bo  so  recorded,  is  wholly  inoperative,  mid  is  not  avail- 
»Mo  to  churge  anybody  with  notico  (seo  tho  Inst  American 
■  eitnlton  of  Sugdcn’s  Vonders  and  Purchasers,  ed.  ot  1873, 
ip'fltll,  noto  g,  and  tho  •  numerous  American  cases  there 
c't.«l  i  1  Story  Eq.  Jur.  secs. '  403,  '404 ;  4  Kent’s 
(Utb  cd.)  174.)  A  moro  licouso  undor  a  patent  need 
nobbo  recorded  (2  Story,  541 ;  see,  nlso,  Curtis  on  Patents, 


■  -  r. 


6cc.  183,  note  2).  “  Wo  Imvo  Boon  tlmt  ft  contract  of  sale 
of  n  future  invention,  although  in  tcnn»  nn  absolute  sale, 
enn  opornte  only  ns  a  contract  to  convey,  nml  tlicro  is  no 
Btntnto  which  contemplates  or  requires  tho  recording  of  nny 
conveyance  excepting  assignments  of  existing  patents  idler 
patents  lmvo  been  obtained,  or  assignment  of  inventions 
made  and  perfected,  wlion  it  is  intended  to  lmvo  the  patent 


Tlie  act  giving  the  nssigneo  of  nn  invention  tho  right  to 
Imvo  tliu  patent  issued  in  his  own  name,  cannot  possibly 
rol'er  to  nn  assignment  of  only  a  part  interest  in  tlie  futuro 
patent,  especially  when  that  is  an  assignment  tub  moth 
only. 

Tiio  distinction  bctwcon  tho  transfer  of  n  partial  interest 
in  n  chattel  nml  an  assignment  and  transfer  of  that  chattel, 
is  nn  established  distinction  important  for  ninny  purposes. 
Tims,  wliero  a  lesseo  transfers  a  part  interest  in  his  lease, 
keeping  a  reversion,  the  holder  of  such  part  interest  is  not, 
in  legal  contemplation,  nn  assignee  of  tho  lease,  and  eonsc- 
picntly  lie  cannot  bo  sued  by  the  lessor  on  the  covenants 
of  the  lease,  there  being  neither  privity  of  cstnto  nor  priv¬ 
ity  of  contract. 

If  a  los6co  disposes  of  tlie  term  granted  to  him,  reserv¬ 
ing  any  portion  thereof,  however  small,  the  instrument 
will  operate  ns  an  underlease,  not  as  an  assignment.  Thus, 
if  the  lessee  reserves  to  himself  only  the  Inst  dny  of  the 
term,  the  assignee  of  tho  rest  of  tho  term  is  not  tho  as¬ 
signee  of  the  lease  (Davis  v.  Morris,  30  N.  T.  509 ;  Tay¬ 
lor’s  Landlord  &  Tenant,  cd.  1873,  sec.  10).  And  n  cove¬ 
nant  not  to  assign  a  lenso  is  not  broken  by  tho  granting  of 
nn  underlease. 

The  issue  of  tlie  patont  to  Edison  nnd  Prescott  jointly 
would  givo  Prescott  the  logal  titlo  to  a  moiety  of  tho 
patent  without  nny  qualification,  but  if  tho  patont  bo  issued 
to  Edison  alouo,  tho  titlo  of  Prescott  will  then  rest  ujion 
tho  assignment  to  him  of  a  moiety  inado  beforo  the  issuo 


legally  issued  to  Edison  and  Prescott  jointly.  And  tl 
Ike  Secretary  should  suggest  a  rehearing  of  tlio  enso  bef( 
tlie  Commissioner  on  tho  points  presented  above,  a 
irhich  were  not  brought  to  tho  Commissioner's  notice. 

Wh  contend  that  tho  matter  should  bo  left  undispot 
if  by  tho  Commissioner  until  ho  shall  lmvo  a  proper  1 
plication  beforo  him  for  tho  issuo  of  tho  patents  to  Edit 

R.  W.  RUSSELL, 

Of  Counsel  for  Tuos.  A.  Euisi 
Now  York,  May  4th,  1875. 


35rt  the  'sJPoicnf  dDjficc. 


ARGUMENT  ON  BEHALF  OF  EDISON. 


As  to  the  Issue  of  Patents  to  Assignees. 


Tho  Act  of  1837,  see.  6,  enacted  “Timt  any  patent 
hereafter  to  bo  issued  may  lie  made  and  issued  to  the  as¬ 
signee  or  assignees  of  the  inventor  or  discoverer,  tlio  assign¬ 
ment  thereof  being  first  entered  of  record,  and  the  appli¬ 
cation  therefor  being  duly  inndo  and  tlio  specification  duly 
by  tho  inventor." 

Patent  Act  of  1870,  see.  33,  “  Tlmt  patents  may  be 
granted  and  issued,  or  reissued  to  l\\a  assignee  o(  tlio  in¬ 
ventor  or. discoverer,  the  assignment  thereof,  &c.  (samo  as 
in  above  net). 

Revised  Statutes  of  tlio  U.  S.,  1875,  page  055,  see.  4895, 
Patents  may  be  granted  and  issued,  or  reissued  to  the 
assignee  of  tho  inventor  or  discoverer,  but  tho  assignment 
must  first  be  entered  of  record  in  tho  patent  office.  And 
in  all  cases  of  an  application  by  an  assignee  for  tlio  issno  of 
a  patent,  tlio  application  shall  bo  inndo  and  tho  specifica¬ 
tion  sworn  to  by  the  inventor  or  discoverer.” 

,  Tho  act  gives  the  assignee  tlio  right  to  demand  tlio 
issue  of  the  patent  to  himself,  when  ho  1ms  recorded;  his 
assignment,  and  tho  patentee  has  filed  an  application  for 
tho  patent,  and  has  duly  sworn  to  tho  specification.  .  And 
tho  assignee  can  domnnd  the  issue  of  tho  pntont  to  hunsolf 


in  such  case,  oven  although  the  inventor  may  demand  the 
issuo  of  the  patent  to  himself  (Opinion  of  Atty-Gcn. Black, 
vol.  9 ;  Opinions  of  Attys-Gen.  pago  JO.'!,  Nov.  28, 1859), 

Meaning  of  the  ‘ward  “  may." 

The  word  “may,”  in  see.  33  of  tho  Act  of  1870, find 
the  6nmo  word  in  the  Revision  of  1875,  means  “shall,” 
when  the  inventor  has  complied  with  tho  requisitions  speci¬ 
fied  and  tho  assigneo  has  recorded  his  assignment  and  de¬ 
manded  the  issue  of  the  patent  to  himself.  Sco  cases 
whore  tho  word  “may”  in  a  statute  prescribing  the 
duties  of  public  officers  has  been  held  to  mean  “ shall” (1 
Kent’s  Com.  407,  noto  (4),  11th  cd).  Tho  assignee  has  a 
claim  lie  jure  that  tho  power  shnll  bo  exercised.  When  the 
inventor  1ms  made  tho  oath,  filed  tho  spccilication  and  paid 
tho  Ice,  and  tho  assignee  1ms  recorded  the  assignment,  tho 
Commissioner  may  issuo  the  patent  to  such  assignee,  and 
must  do  so  if  tho  assigneo  demands  it.  In  that  sense  the 
act  is  mandatory.  Without  that  demand,  the  Commis¬ 
sioner  is  not  bound  to  take  notice  of  tho  recorded  assign¬ 
ment,  but  may  issue  the  patent  to  tho  inventor. 

Tho  proposition  is  not  sustninablo  that  the  Commissioner 
is  invested  with  a  capricious  power  in  tho  matter,  so  that: 
although  all  the  requisites  of  the  law  have  been  complied  • 
with,  and  all  the  rules  and  regulations  of  tho  oflico  duly 
observed,  ho  may,  whenever  he  chooses  to  do  so,  refuse  to 
issue  tho  pntont  to  tho  legal  owner  of  the  invention.  • .  ft 

It  may  ho  suggested,  however,  that  tlicro  may  bo  casia 
where  the  assignee’s  title  is  defective,  and  Hint  tho  Coin* 
inissioncr  hns  power  in  such  eases  to  reject  his  application. 
The  answer  to  this  is,  that  wliero  tho  assignment  is  pcrfec| 
on  its  face,  and  absolute,  tho  Commissioner  should  leave  tho, , 
inventor  to  his  legal  remedies  to  cnforco  his  claims  as; 

agninst  such  assignment.  ,  : 

Ii  the  assignment  hns  been  obtained  by  fraud,  or  hj  ' 
opon  to  any  other  objection  in  a  court  of  law  or  equity,  tjiOj  ,; 
inventor  can  obtain  redress  in  tho  courts,  and  in  tlifc : 
moan  time  can  abstain  from  applying  for  tho  patent,  prifj  ,■ 


he  hns  applied  for  it,  may  withdraw  his  application.  And 
if  the  assignee  shall  be  allowed  by  tho  inventor  to  obtain 
the  patent  and  is  not  rightfully  entitled  to  hold  it,  a  decree 
may  be  obtained  compelling  him  to  convey  it  to  the  in- 

The  principal  questions. 

The  following  nre  the  leading  questions  arising  in  this 

1.  Whether  Harrington  is,  under  thu  assignment  of  4th 
April,  1871,  an  assignee  of  the  invention  in  question,  within 
the  meaning  of  the  Act  of  1S70,  sec.  33,  assuming  that  the 
instrument,  in  terms,  embraces  the  invention. 

2.  Whether  Prescott  is,  under  the  assignment  of  19th 
August,  1S74,  the  legal  assignee  of  a  moiety. 

3.  Whether  the  Commissioner  is  bound  to  issuo  a  pat¬ 
ent  to  nn  assignee  of  nil  invention  where  such  assignee  hns 
had  notice  of  a  prior  contract  hi  htvor  of  another  person, 
the  same  not  amounting  to  an  actual  assignment  of  the  in¬ 
vention. 

4.  Whether  the  recording  of  such  last-mentioned  docu¬ 
ment  in  the  patent  office  is  sufficient  notico  of  its  contents 
to  the  subsequent  assignee  of  the  invention. 

5.  Whether  tho  assignment  of  4th  April,  1871,  docs  em¬ 
brace  the  invention  in  question. 

0.  What  aro  the  rights  of  tho  parlies  at  law  and  in 
equity,  assuming  tho  assignment  to  Prescott  to  prevail  as 
the  only  legal  assignment  at  this  time? 

Remarks  on  the  Commissioner  s  decision. 

The  Commissioner  of  Patents  holds  that  tho  assignment 
from  Edison  to  Prescott,  dated  10tl|  August,  1S74,  vested  a 
legal  title  in  Prescott  as  assigneo  of  one-half  ol  tho  inven¬ 
tion  in  question,  which  was  then  ready  to  bo  patented ;  and 
that  tho  assignment  dated  4th  April,  1871,  from  Edison  to 
Harrington  did  not  opernto  ns  a  legal  transfer  of  that  inven¬ 
tion,  but  could  only  opernto  ns  a  contract  to  assign  tho  in¬ 
vention  when  it  should  bo  perfected,  or  tho  pntont  for  it 


when  it  should  bo  obtained  by  the  inventor.  The  reason 
given  for  tins  decision  is  that  tho  invention  was  not  made; 
at  tho  dnto  of  tho  assignment  to  Harrington,  4th  April, 
1871. 

Tho  Commissioner  holds  that  tho  inventions  were  made 
at  .tho  date  of  the  assignment  to  Prescott,  19th  August, 
1874.  That  instrument  refers  to  soven  applications  for 
patents  for  the  invention  or  inventions  ns  having  been  pre¬ 
pared. 

Tho  Commissioner  further  holds  that  ho  has  no  right  to 
inquire  into  and  decide  tho  question  whether  Prescott  is 
hound  in  equity  by  any  provious  contracts  betwcon  Edison 
and  Harrington  affecting  those  inventions. 

The  Commissioner  gives  no  opinion  on  tho  question 
(whicli  ho  refers  to,  p.  17)  whether  the  assignment  of  4th 
April,  1S71,  did,  by  its  terms,  embrace  the  inventions  of 
tho  devices  in  question  for  quudruplex  telegraphy.  It  is 
contended,  on  behalf  of  Prescott,  that  tho  instrument  re¬ 
lates  .only  to  automatic  or  fast  telegraphy  nnd  certain 
printing  machinery,  nnd  that  the  quadruples  system  is  not 
a  fast  system  of  telegraphy,  within  tho  menning  of  tho 
phraseology  of  that  instrument  (seo  this  question  discussed 
port ,  p ,2a,  cl  sep) 

As  to  the  truo  dnto  of  tho  invention,  tho  Commissioner 
concludes  that,  undor  the  circumstances,  it  is  to  be  pro-  [ 
Burned  that  it  was  not  made  as  early  ns  4th  April,  1871,  the 
applications  for  the  patents  not  having  been  filed  until'lst 
September,  1874,  as  to  six  of  them,  nnd  not  until  28th  De-  ' 
camber,  1874,  ns  to  Ibe  seventh  pntent.  Tho  Commissioner 
might  have  given  an  additional  reason  for  holding  that  the 
inventions  wore  not  mndo  as  early  ns  4th  April,  1871,  for 
the  caveat,  which  lie  refers  to  in  his  opinion  (p.  18),  ns  tho 
first  record  in  tho  Patont  Office  specifically  referring  to 
theso  inventions,  was  filed. in  1873;  and  ns  that  caveat 
must,  in  compliance  with  tho  requisition  of  tho  statute,  ' 
linvo  declared  that  tho  invention  was  not  thou  completed,  '  ; 


it  disposes  of  ;tho  question  whethor  it  was  completed  ns 
early  ns  4th  April,  1871 — that  is,  assuming  that  tho  Com¬ 
missioner  is  right  in  his  reference  to  thio  caveat  ns  being  a 
caveat  for  tho  inventions  which  afterwards  formed  tho  sub- 
•  jeet  of  the  applications  for  tho  patents  now  in  question. 

Tho  Commissioner  is  in  error  in  saying  (p.  18)  tlint,  in  a 
court  of  equity,  Harrington  will  linvo  to  prove  that  the  in¬ 
vention  was  perfected  at  the  dnte  of  tho  instrument  under 
.  which  ho  claims.  On  tho  contrary,  it  is  well  settled  tlint  a 
contract  to  dispose  of  a  future  invention  is  binding,  and  will 
be  enforced  in  a  court  of  equity  against  tho  inventor,  when 
.  tho  contract  is  not  unconscionable  (see  authorities  cited 
port,  p ./2).  And  such  a  contract  will  also  be  enforced 
against  a  party  having  notice  of  such  contract,  before  ac¬ 
quiring  an  ndvorso  titlo  by  assignment  from  the  inventor. 
These  points  will  be  fully  treated  hereafter. 

The  Commissioner  errs  also  in  saying  (p.  23)  that  Pres¬ 
cott,  whatever  effect  may  be  given  to  tho  contract  with  Ilur- 
■  rington,  must,  in  nny  event,  take  what  ho  [tho  Commis¬ 
sioner]  assumes  to  be  Edison’s  one-third  of  the  title  to  tho 
patents. 

Tho  answer  to  this  is,  that  Edison,  under  tho  contract 
with  Harrington,  4th  April,  1871,  is  to  have  one-third  ot 
the  net  proceeds  of  tho  patents — the  right  to  dispose  of 
Edison’s  one-third  being  given  to  Harrington,  “  the  whole 
to  bo  under  tho  solo  control  of  said  Harrington,  to  bo  dis¬ 
posed  of  by  him.” 

Tho  Commissioner  cites  several  authorities  (p.  24)  in 
support  of  his  proposition  that  Edison’s  assignment  to 
Prescott  must  at  all  events  tnko  effect  upon  Edison’s  one- 
third  of.  tho  patonts.  It  is  unnecessary  to  comment  upon 
those  authorities,  ns  tho  fact  just  mentioned  which  tho 
Commissioner  has  overlooked,  renders  thoso  authorities  in- 
applicable;  Tho  right  of  Prescott  would  bo  confined  to 
Edison’s  share  of  tho  proceeds  of  sales  made  by  Harrington, 
and  this  could  not  give  Prescott  nny  title  to  tho  patent 
itself  as  against  Harrington. 


Tlio  Commissioner  laid  grent  stress  upon  tin's  point  as 
justifying  him  in  granting  the  application  of  Prescott  to 
hnvo  tho  patents  issued  to  him  and  Edison  jointly. 

Tiie  remarks  of  the  Commissioner  (p.  22)  on  the  sub¬ 
ject  of  estoppel  are  not  pertinent  to  the  case.  Tho  doctrine  ' 
of  estoppel,  whether,  by  deed  or  in  pais,  has  no  applica¬ 
tion  here.  If  the  deed  or  4th  April,  1871,  hud  clearly  em¬ 
braced  the  quadruples  invention,  and  if  it  had  operated 
upon  a  perfected  invention,  it  would  have  prevailed  as  a  . 
legal  assignment  over  tho  subsequent  assignment  by  Edi¬ 
son  to  Prescott,  notwithstanding  the  fact  that  Edison  might 
be  estopped  ns  against  Prescott,  from  denying  the  subse¬ 
quent  deed  to  him."  It  is,  therefore,  unnecessary  to  coin-  : 
ment  upon  the  authorities  cited  by  tho  Commissioner  on 
this  point. 

The  only  case  cited  by  the  Commissioner  (p.  20),  for  the 
proposition  that  the  deed  of  4th'  April,  1871,  was  not 
oneetual  to  pass  tho  title  because  the  invention  had  not  then 
been  made,  and  therefore  it  could  operate  only  as  an  exec¬ 
utory  contract,  is  Gibson  v.  Cook,  2  Blntcli.  144,  and  that 
case,  although  not  expressly  overruled,  is  opposed  to  more 
recent  decisions  (see  post,  p./A,  et  seq.,  whero  this  ques¬ 
tion  is  fully  discussed,  with  full  reference  to  the  authorities).  : 

Recording. 

Prescott’s  counsel  apparently  concede  that  tho  record  of 
the  deed  of  4th  April,  1871,  was  notice  of  its  contents  to' 

1  rescott  and  all  parties  concerned  (sco  Conkling’s  argument,1 
P-  ),  and  yet  it  might  have  been  contended  that  tho 
recording  of  that  deed  being  unauthorized,  tho  record  did 
no  operate  ns  notice  ,(seo  this  point  discussed,  and  authori¬ 
ties  cited, post,  p.  ).  \i 

Ejuitalle  rights.— Power  0f  tho  Commissioner. 

,A®  ^  tl'°  question  whether  the  Commissioner  can  look1' 
ja. the  legai  title  of  tho  assignee,  ns  shown  by  a  ro->' 
oided  instrument  operative  as  an  assignment/ 


It  has  boon  contended  in  this  case,  that  tho  Cominis 
ionor  can  sco  to  tho  equitable  rights  of  the  parties— tlml 
io  is  not  bound  by  tho  strict  rules  of  law  ns  distinguished 
rom  tho  principles  which  prevail  in  courts  of  equity,  but 
lint,  on  the  contrary,  he  should  treat  tho  latter  ns  para 

To  this  it  is  replied  that  the  nssiguco  claiming  the  issue 
f  the  pntent  to  himself,  must  claim  under  a  recorded 
’Sigiiinoiit,  and  that  if  Harrington  lias  the  l  ight  in  equity 
)  cnforco  his  prior  contract  with  Edison,  so  ns  to  cut  out 
lie  legal  assignee,  Prescott,  the  Commissioner  has  lie 
owor  to  administer  that  measure  of  remedial  justice  j  that, 
i  tho  language  of  the  Commissioner’s  opinion,  “ho  lias 
ot  the  authority  of  a  court  to  go  outside  the  record  (mean- 
ig  the  records  of  the  •patent  oflicc)  to  consider  evidence 
i  to  outstanding  equities.”  Upon  this,  however,  it  is  to  bo 
jserved  that  there  may  bo  cases  whore  the  Commissioner, 
deciding  upon  tho  application  of  an  assignee  for  the 
sue  of  the  patent  to  himself,  may  have  to  go  outsido  tho 
cords  of  the  patent  oflice.  Thus,  if  there  are  two  eon- 
cting  assignments  recorded,  and  it  is  claimed  that  tho 
m  last  recorded  was  first  executed,  I  be  Commissioner 
wild  have  to  receive  evidence  on  that  point  (see  Conunis- 
mer  of  Patents  v.  Whiteloy,  4  Wall.  37-4). 

It  is  further  contended  by  Prescott’s  counsel,  that  tho 
signment  of  4th  April,  1871,  to  Harrington,  is  not  nil 
sigiinicnt  but  only  a  contract,  and  further,  that  .t  Jo™ 
it  cuibraco  the  inventions  now  in  question. 

Right  of  assignee. 

Suppose  an  assignment  of  the  whole  t  tin  invdntiou 
d  been  made  by  Edison  to  Prescott,  and  it  had  been  ro- 
rded,  and  Edison  had  applied  for  a  patent  in  his  own 
me,  in  that  caso  Prescott  could  have  insisted  upon 
issuo  to  himself.  Ho  would  have  had  tho  statutory 
[lit  to  such  issue,  and  tho  Commissioner  would  not  bo 
itifled  in  refusing  bis  demand  on  tho  ground  that  ho 


[Prescott)  lmd  received  notico  of  n  i>nor  contract  not  amount¬ 
ing  to  ft  legal  assignment  of  the  invention  to  Harrington. 

The  right  of  tlio  assignee  of  an  invention  to  obtain  tho 
issue  of  tho  patent  to  liiinsolf,  dopends  upon  tho  assign¬ 
ment,  not  upon  the  request  or  direction  of  tho  inventor  to 
tho  patent  offico  to  issuo  tho  patent  to  tho  assignee.  Snell 
request  or  direction  is  unnecessary — it  is  not  cnllod  for  by 
tho  statuto. 

1.  As  to  the  Legal  effect  of  the  tivo  Assign¬ 
ments  to  Harrington  and  Prescott, 

Tho  difference  between  an  assignment  and  a  contract 
to  assign  personal  property,  clintlcls  real,  &e.,  ib  well  set¬ 
tled.  There  can  bo  no  actual  assignment  of  n  thing  not  in 
existence;  and  although  it  maybe  tho  subject  of  n  valid 
contract  of  sale,  that  contract  will  not  pass  tho  actual  titlo 
to  tho  thing  sold.  Thus,  a  valid  sale  may  be  mndo  of  tho 
wine  that  a  vineyard  is  expected  to  produce,  or  the  grain 
that  a  field  is  expected  to  grow  (t  Parsons  on  Contracts, 
edition  of  1873,  p.  622,  and  cases  thero  cited). 

Tho  rulo  that  one  cannot  grant  personal  property  in 
which  ho  lias  no  vested  interest  or  title,  was  applied  to  an 
attempted  sale  of  “  all  tho  halibut  that  may  bo  caught  by 
tho  men  and  crew  of  tho  schooner  R.,  on  tho  voyngo  upon 
which  sho  is  about  to  proceed  ”  (Low  v.  Pew,  103  Mass. 
347,  decided  in  1871).  That  was  an  action  of  replevin, 
which  brought  up  tho  question  of  title,  and  it  was  held  that 
tho  contract  did  not  pass  tho  title  to  tho  BbIi  when  caught. 
This  is  a  well  reasoned  opinion  with  an  amplo  referonco  to 
authorities.  Tho  court  observed  thnt  it  is  sufficient  if  the 
seller  has  a  potential  interest  in  tho  thing  sold,  bnt  thnt  n 
mere  possibility  or  oxpoetnncy  is  not  tho  proper  subject  ol 
a  transfer. 

A  contingent  romniudor  created  by  deed  or  will  cannot, 
at  common  law,'  bo  convoyod  beforo  tho  contingency  hap 
pons  (4  Kent’s  Com.  201).  But  this  !b  altered  by  statute 
in  Now  York.  Chom  in  action  are  not  assienablo  at  com 


,n  law,  but  courts  of  equity  protect  tho  assigneo  (2  Bln. 
in.  442).  An  assignment  will  not,  at  common  law,  pass 
or  acquired  property  (5  Taunt.  212).  Rights  not  ra¬ 
ced  to  possession  uro  not  assignable  at  common  law. 
iis  has  been  applied  to  personal  property.  Tho  reason 
signed  is  thnt  it  is  necessary  to  prevent  maintenance  and 
igntion. 

But  theso  almost  ohsoleto  principles  of  tho  common 
w  luivo  no  proper  relation  to  tho  question  now  in  hand, 
int  question  being  wlnit  instrument  of  transfer  is  an  as- 
tjnmenl  within  the  meaning  of  the  patent  Urn,  sect.  33. 

Tho  question  frequently  arises  as  to  what  constitutes  an 
isigmnent  under  tho  pntont  law,  so  thnt  the  assigneo  in) 
inintnin  an  action  in  his  own  name.  Thero  inns  op 
•ords  of  grant  or  transfer  in  the  instrument.  Tho  interest 
mst  bo  transfcrmblc,  and  must  be  actually  trails  cired. 

In  Nicoll  v.  Erie  R.R.  12  N.  V.  121,  it  was  held  ti  nt 
right  of  tho  grantor  in  a  conveyance  in  fee  to  re-enter lor 
reach  of  a  condition  subsequent,  is  not  assigns  o  P 
Licli  breach.  The  possibility  of  reverter  is  no  « 
oupled  with  an  Merest,  but  a  tare  htg  alone,  and 

i  not  embraced  in  the  provisions  1  K.  .  >  *  fc\ 

naking  expectant  estates  in  real  an  perso  11  1 

ilienuble. 

r„uMr «..i.i  XSffA 

right  of  a  lessee  or  his  assigns  to  demand  a  renewal  of  h. 
lease  (Beo  Igguldon  v.  May,  7  East,  -3  ).  y 

certain  whether  tho  right  will  bo  exercised,  but  it  is  assig. 
ablo  with  the  lease.  .....  nf  tl 

It  may  also  die  compared  to  to '«»•*£ 
husband  in  his  wifo’s  lands,  ot  which  ho  y^ 

ztssstt&zv*  ■'»  **  *  *  * 


i  „.Jir — 


band  ;  none  in  law  until  lior  dowor  has  boon  assigned.  It 
lias,  however,  boon  held  that  a  rigiit  of  dowor  was  not  as- 
arguable  beforo  aetual  assignment  of  tho  dower  (Green  v. 
Putnam,  1  Barb.  500 ;  Seott  v.  noward,  3  Barb.  31 ;  Moore 
v.  Mayor  of  H.  Y.  4  Sold.  113).  . 

But  such  assignment  might  constitute  a  contract  to  as¬ 
sign,  which  would  ho  enforced. 

Tho  tenant  by  tho  curtesy  initiato  has  an  inchoate  right 
which  may  bo  convoyed.  This  initiato  estato  may- bo  sold 
on  execution,  and  will  pass  by  an  assignment  of  tho  bus- 
band  s  property  (4  Kent’s  Com.  29 ;  2  Cow.  439;  3  Gray, 

Tho  following  review  of  the  authorities  will  throw  liH.t- 
on  the  questions  to  ho  considered: 

In  Herbert  v.  Adams,  4  Mason,  15,  it  was  held  by  Judge 
Story,  that  an  assignment  of  an  invention  could  be  mado 
the  ...ven  ,o„  ,s  patented ;  that  it  is  a  good  transfer 
of  the  right  of  tho  patentee  immediately  upon  his  obtain- 

adverse  ’title  ’  ‘  “t  “  "■°“l<1  be  ‘°  set  up  any 

of  I V'  Ct-'U0!1,  1  509>  ho],3s  the  assignee 

ofn.i  invention  (not  yot  patented)  may  file  a  bill  in  his 
ovn  name,  under  sect.  10  of  tho  act  of  1S3C,  against  a 

nSinTtl  ’  r  t  I,nto,,teo’  tor  tllu  purpose  of  nn- 
P<  m“ei  t0  him>  m,d  *»  l»>vo  a  patent 
gi anted  to  such  nssigneo.  1 

•  °toko’ 2  Bintci1-  h°>  «•  wa  , 

patent  no t'vet”  7  "'ngra,,t  of«'ut„ro  tenn  of  a  ' 

patent  not  yot  in  esse  (an  extension  of  a  pa  tout!  is  not  tho 

of  sc™  finrr,01  aY°rrn  or  w**ln  tho  sense 
ot  sect.  11  of  the  act  of  July  4,  1830;  and  tho  nVlit  in 
such  an  interest  whon  stipulated  for  rests  only  in  contract 

is 


In  Rnthhiin  v.  Orr,  5  McLean,  132,  Judge  McLean  hold 
that  “an  invention  of  a  iniiehiue  may  as  well  ho  sold  beforo 
as  after  tho  application  for  a  patent.  Tho  thing  invented 
is  the  property  of  tho  inventor  us  much  so  ns  tho  manu¬ 
script  of  an  author.” 

In  Rich  v.  Lippincott,  20  Journal  Franklin  Institute, 
3d  scries,  13,  Judgo  Grier  held  that  an  assignment,  though 
antecedent  to  tho  patent,  is  a  valid  legal  assign  incut  of  the 
invention  afterwards  patented  in  tho  name  of  tho  in¬ 
ventor. 

In  Gnylor  v.  Wilder,  10  IIow.  477,  in  the  Snproino 
[  Court  of  the  TJ.  S.,  it  was  argued  by  Mr.  Wobstcr  that  an 
invention  is  assignable  at  law.  Mr.  Oiiyler,e»nfra,  argued 
that  an  invention  is  not  assignable  independent  of  tho 
;  patent  law;  that,  except  by  statute,  the  iuvontor  has  no 
right  of  property  in  his  invention.  Tho  court,  per  Taney, 
•'  O.  J.,  held  tlint  when  the  invention  in  perfected,  the  in  center 
.  has  a  right  to  a  patent  which  is  assignable,  and  that  such 
an  assignment  vests  in  tho  assignee  the  legal  title  to  the 
patent  when  it  has  boon  issued,  and  that  no  further  or  ad¬ 
ditional  assignment  is  necessary  to  perfect  tho  title  of  tho 
■  assignee. 

Tho  Court  say  tlint  this  was  the  received  construction 
of  the  Act  of  17tl3  on  several  circuits,  and  that  it  had  beon 
held  that  tho  action  for  iulritigeiiicnt  must  bo  brought  by 
such  assignee. 

Curtis,  in  tho  latest  edition  of  his  work  on  Patonts 
(4th  edition,  1S73),  section  173,  says  that  the  decision  of 
tho  Court  in  the  last  mentioned  case  “  gives  a  soinowhat 
broader  operation  to  tho  Act  of  ISiifi^s^Ct^ll^liijn  its 
terms  appear  to  einbrnco.”  Mr.  Gurus  hBr^orronoously 
assumes  that  tho  decision  in  question  applies  to  the  iesuo 
of  tho  patent  to  tho  assignee.  It  has  no  roforcnco  to  that 
subject.  That  was  provided  for  in  tho  Act  of  1837,  which 
did  not  apply  to  tho  enso  beforo  tho  Court. 

Tho  Court  has  recently  carried  tho  principle  of  tho  de¬ 
cision  in  Gnylor  v.  Wilder  a  stage  further  (soo  10  Wal- 


It  is  inferable  from  the  reasoning  of  the  Court  in  Gay- 
lor  v.  Wilder,  that  an  assignment  of  a  partial  interest  in 
the  completed  invention  and  expected  patent  therefor, 
would  vest,  on  the  dolivory  of  the  assignment,  the  legal 
title  in  the  designated  portion  of  the  invention  in  tho 
assignee.  The  Court  treats  a  completed  invention  ns  prop¬ 
erty  assignable  at  common  law.  But  it  is  to  ho  observed 
that  nnder  the  Act  of  1830  such  assignee,  whether  of  the 
whole  or  part  of  the  invention,  would  have  no  right  to  de¬ 
mand  tho  issue  of  tho  patent  to  himself.  Dor  did  the  Act 
authorize  the  recording  of  an  assignment  of  an  invention 
not  yet  patented.  That  right  was  first  created  by  the  Act 
of  1837. 

The  assignment  to  Harrington  in  18  il  being  made 
prior  to  the  invention,  could  only  operate  as  a  contract  to 
assign  the  invention  when  it  should  be  made,  even' if  it  is 
construed  to  embrace  by  its  teruiB  the  invention  in  ques¬ 
tion.  It  cannot  be  regarded  as  such  an  assignment  as  is 
contemplated  by  the  clause  of  tho  Act  of  Congress  which 
gives  tho  assignee  the  right  to  demand  tho  issuo  of  the 
patent  in  his  own  name.  Soo  on  this  point  Curtis  on 
Patents,  4th  ed.  [1873],  see.  183,  note  2,  to  the  offcct  that 
no  present  nBsigmnent  can  be  made  of  nn  invention  not 
yet  in  existence.  Although  this  is  founded  on  a  familiar 
principle,  it  is  to  be  observed  tlmt  no  authority  is  hero 
cited  by  Curtis- which  can  now  be  considered  to  sustain 
the  above  proposition— the  case  cited  from  2  Blntchf.  143, 
being  irreconcilable  with  tho  recent  decision  in  10  Wall. 
307. 

A  contract  in  relation  to  a  future  invention  will  bo  en¬ 
forced  in  a  court  of  equity  when  tho  bargain  is  a  fair  one 
(Nesmith  v.  Calvert,  1  Woodb.  &  M.  41 ;  Curtis  on  Pat¬ 
ents,  sec.  180,  noto).  At  tho  dnto  of  the  contract  4th  April, 
1871,  not  only  was  tho  invention  not  then  made — it  docs 
not  appear  to  linvo  been  in  embryo  or  even  contemplated. 

Equity  will  support  assignments  of  contingent  interests 
aud  expectations,  aud  of  things  which  hare  no  present 


ini  existence,  provided  tho  agreements  are  fairly  entere- 
.  (Story  Eq.  Jur.  see.  1039,  1057,  «;  2  Story  It.  030 
Inre,  440;  Fiold  v.  Mayor  of  N.  Y.  0  N.  Y.  170 
oro  V.  Littol,  41  N.  Y.  06;  see  also  Stoner  v.  Eycks 
icr,  3  Koyes,  020,  nfli’g  40  Barb.  84 ;  Hinkle  v.  Wanzo: 
How.  308). 

Tho  purclinsor  of  nn  expectancy  has  not  nn  interest  i 
property,  hut  a  mero  right  under  tlio  contract.  And 
;he  same  if  there  be  an  instrument  in  writing  in  tl 
in  of  nn  actual  assignment,  for  in  contemplation  ot  equit 
.mounts  not  to  nn  assignment  of  a  present  interest,  bi 
y  to  a  contract  to  assign  when  tlio  interest  becom 
ted.  (See  Purdon  v.  Jackson,  1  Buss.  R.  1 ;  Ilinklo 
Inzer,  17  How.  308). 

In  Eiold-v.  Mayor  of  N.  Y.  (0  N.  Y.  179),  it  was  lie 
-t  “an  assignment  for  a  vnlunblo  consideration  ot  d 
uds  having  at  tho  time  no  actual  existence,  but  wliii 
t  in  expeetnney  merely,  is  valid  in  equity  ns  nil  agu 
nt,  and  takes  effect  as  an  assignment  when  tlio  deman 
ended  to  bo  assigned  are  subsequently  brought  into  t 
nice.”  (That  is  to  say  it  takes  eil'eet  ns  nn  assigning 
der  the  Now  York  Code,  so  that  an  action  may  be  li 

In  Power  v.  Alger  (13  Abb.  475)  it  was  held  that  futn 
Ills  woro  assignable  under  the  New  York  statute. 

A  poiut  has  boon  made,  but  not  tally  argued,  to  t 
ect  that  who.,  an  assignment  is  made  o.f  a  future  mvi 
n,  such  assignment  will  take  legal  effect ;  as  soon as 
, -cation  is  perfected.  In  tlio  case  in  a  •  fi 
..  was  not  on  tho  issue  of  a  patent,  but  was  upon  I 
lo  to  a  patent  already  issued. 

Tho  question  here  is  whether  nn  assignment  of  a 
ution  not  yet  made,  would  bo  bold  to  operate  as  a  lc 
insfer  of  the  invention  at  the  dnto  of  tl.  o  st  nets, 
out  off  tho  right  of  nn  assignee,  holding  an  assignment 
d  invention,  after  it  has  boon  ...ado  and  betoro  the  is 


In  tho  examination  of  this  question  it  is  necessary  to 
consider  the  bearing  of  tiie  recent  decision  of  the  Supreme 
Court  of  the  United  States  in  Railroad  Co.  v.  Trimble  (10 
Wall.  307),  which  has  been  followed  and  applied  by  very 
recent  decisions  on  Circuit  in  New  York  and  Massachusetts. 

In  that  case,  in  the  Supreme  Court,  it  was  held  that  “a 
grant  by  a  patentee  of  an  extension  of  a  patent,  before  any 
extension  has  issued,  will  carry,  if  the  torms  of  tho  grant  bo 
proper  ones,  tho  legal  as  well  as  tho  equitable  intorest  in 
tho  patent.” 

That  decision  must  bo  regarded  ns  overruling  the  decis¬ 
ion  in  Gibson  v.  Cook  (2  Blotch.  1-19,  cited  supra),  which 
is  tho  case  relied  upon  by  Prescott’s  counsel  in  tho  argu¬ 
ment  boforc  tho  Commissioner  of  Patents.  It  was  a  case 
3n  an  extended  patent. 

Judgo  IngcrsoII’s  decision  in  Day  v.  Candco  (3  Fisher, 
9),  is  ulso  overruled.  It  was  there  held  that  “a  pntentco 
innnot  convey  nil  extended  patent  before  tho  extension.  He 
may,  however,  agree,  upon  a  valuable  consideration,  to  con¬ 
vey  such  right  when  it  shall  bo  vested  in  him.” 

In  Aiken  v.  Dolan  (3  Fisher,  197),  decided  by  Judgo 
Cadwnlludcr  (in  1807),  a  patentee  had  agreed  that  ho  would, 
ipon  certain  conditions,  assign  to  B.  an  extended  term.  It 
vas  held  that,  if  tho  conditions  had  been  fulfilled,  B.  would 
mve  boon  tho  equitable  owner. 

In  Rnggles  v.  Eddy  (5  Fisher,  581 ;  10  Blntch.  52),  dc- 
lided  by  Judge  Woodruff  in  June,  1872,  S.  assigned  toR.  n 
intent  and  any  extension  of  the  samo  which  might  be  thcre- 
iller  granted.  Tho  assignment  was  recorded.  “Subsc- 
picntly,  tho  patent  was  extended  to  S.,  and  lie  afterwards 
issigned  to  E.  all  his  interest  in  tho  extension.  E.  wont  on 
o  uso  tho  invention,  and  was  sued  by  R.  in  equity  ior  in- 
ringeineiit.  Hold,  that  tho  right  to  tho  oxtended  torin 
inssed  to  R.,  tho  first  assignee. 

“  The  title  of  R.,  if  regarded  ns  an  equitable  title,  issnf- 
iciont  to  enable  him  to  sue  E.  in  equity,  E:  having  tnkon 
itle  after  the  assignment  to  R.  was  recorded.” 

“  But  eemlle,  that  R.  took  tho'Iegal  titlo.”  ■ 


“  Tho  enso  nbovo  first  cited  (Railroad  Co.  v.  Trimble,  10 
Wall.  387)  tends  to  show  that,  in  fact,  tho  complainant  has 
tho  logal  title.” 

It  will  be  observed  that  the  assignment  to  R.,  being  effi¬ 
cient  ns  n  legal  transfer,  it  of  right  prcvuilod  against  tho 
subsequent  assignment  to  E.,  irrespective  of  tho  fact  that  tho 
assignment  to  R.  was  recorded  before  tho  assignment  to  E. 
was  made.  It  might  bo  contended  tlint  there  was  no.  legal 
nuthority  to  record  the  assignment  to  R. ;  that  tho  act  of 
1830,  see.  11,  relates  only  to  assignments  of  patents  which 
hnvo  been  actually  issued  at  tho  dato  of  the  assignment  (sec- 
36  of  the  act  of  1870  is  to  tho  snmo  effect). 

Tho  provision  in  the  act  of  1837,  sec.  0,  authorizes  tho 
recording  of  an  assignment  of  an  invention  before  tho  pat¬ 
ent  is  issued,  for  tho  purpose  of  giving  the  assignee  the  ' 
right  to  hnvo  tho  patent  issued  in  his  own  nnine.  Tho  act 
I  of  1870,  see.  33,  is  to  the  same  cfleet.  But  these  provisions 
do  not  authorize  tho  recording  of  an  assignment  of  tho 
right  to  nn  extended  term  before  such  oxtonsion  has  been 
granted.  Such  nn  assignment  is  not  embraced  by  tho 
words,  “Evory  pntent  or  any  interest  therein  shall  bo  ns- 
signnblo  in  Inw ;  ”  and  said  assignment  shall  bo  void  as 
against  any  subsequent  purchaser,  &c.,  “  unless  it  ho  re¬ 
corded  in  tho  Pntent  Office.”  (Seo  on  this  point  Curtis  on 
Patents,  sec.  183,  note  2,  4th  ed.) 

Gear  v.  Grosvenor,  0  Fisher,  314,  March,  1873,  3  Off. 
Gnz.  Pat.  380,  in  equity,  Shepiey,  Judge,  held  that,  “n 
conveyance  made  before  a  grant  ot  extension  becomes  op¬ 
erative  upon  tho  right  ns  soon  ns  tho  extension  has  been 
granted,  and  by  forco  of  such  conveyance  tho  legal  title 
under  the  extended,  ns  well  ns  tho  original  term,  passes 
to  the  grantoo.”  Tho  Court  cited  tho  nbovo  caso  in  10 
Wall,  ns  deciding  that  preciso  point. 

Respondent’s  counsel  in  Gear  v.  Grosvonor  contended 
that  the  assignment  of  N.  Gear  to  Alonzo  S.  Gear  was  de¬ 
livered  before  the  extension  was  granted,  and  that  Alonzo 
S.  Gear  did  not  take  thereby  n  vested  legal  title,  but  only 
an  equitable  interest,  capable  of  being  perfected  by  a  court 


of  equity,  in  the  event  of  a  refusal  by  N.  Gear  to  porfcct  it 
by  a  subsequent  conveyance. 

Remarks  on  the  case  of  R.  R.  v.  Trimlle ,  10  Wall.  857. 

In  tlio  also  in  10  Wallace,  tbe  court,  per  Swnyno,  .T., 
held  tlmt  the  effect  of  the  contract  in  thnt  case  to  assign 
the  expectant 'extension  of  the  patent,  had  been  settled  by 
the  court  in  Gaylor  v.  Wilder,  which  is  quoted  at  length. 

The  court  appear  to  liavo  considered  tlint  the  incipiont 
or  inchoate  right  of  an  inventor  to  liavo  an  extension  of 
his  patent  oil  the  happening  of  a  ccrtnin  event,  is  liko  the 
inchoato  right  of  an  inventor  (who  has  perfected  his  in¬ 
vention)  to  obtain  a  patent,  and  which  right  the  court  in 
Gaylor  v.  Wilder  hold  to  bo  the  subject  of  a  legnl  assign¬ 
ment  (ns  to  this  sco  ante,  p.  11). 

It  does  not  follow,  from  this  decision,  thnt  tlio  assignee 
of  a  projected  invention  which  tlio  intonded  inventor  pro¬ 
poses  to  try  to  nuiko  at  sotno  futuro  timo,  becomes,  by  vir¬ 
tue  of  such  assignment,  the  legal  assignee  of  tlio  invention 
as  soon  ns  such  invention  has  been  made,  far  loss  thnt  he  is 
evor  to  be  regarded  for  any  purposo  whatever  ns  a  legal 
assignee  nt  tlio  date  of  the  instrument  of  assignment. 

In  a  passage  in  the  opinion  of  tho  court  ns  given  by 
Swnyne,  J.,  in  Railroad  Co.  v.  Trimble,  he  appears  to  have 
overlooked  the  distinction  botween  an  assignment  of  nil 
invention  not  yet  made  nnd  an  assignment  of  a  perfected 
invention  which  has  often  boon  treated  as  property  trnns- 
ferrnblo  nt  common  law.  Thnt  distinction  was  fully  recog¬ 
nized  by  Chief  Justice  Timoy  in  Gaylor  v.  Wilder.  He 
held  thnt  tho  inventor,  Fitzgerald,  hail  nn  inchonte  right  to 
obtnin  a  patent,  nnd  ho  says:  “Fitzgerald  possessed  this 
inchoate  right  nt  tho  time  of  tho  assignment.  Tlio  dis-  . 
cover i/  hatl  keen  made  and  tho  specification  prepared  to- 
obtnin  a  patent.”  Tlio  importance  of  thnt  rcinnrk  will  bo 
recognized  on  perusing  Mr.  Webster’s  nrgmnont  in  tho  S 
:ase.  .  , 

In  tho  case  of  tho  Railroad-Co.  v.  Trimble,  the  court  ns- 
wne  that  tho  decision  in  Gaylor  v.  Wilder  was  nn  authority  ' 


to  support  tho  proposition  that  tho  deed  of  Howo 
Trimble,  dated  0th  July,  1S44,  assigning  certain  p 
which  had  been  granted  to  IIowc,  and  also  patents 
might  thereafter  he  granted  to  him  for  iinprovemen 
the  said  patented  inventions— with  words  sufficient  t 
brace  extended  terms — was  sufficient  to  transfer  tho 
title  to  an  extended  term,  of  n  patent  for  nil  improve 
for  which  improvement  n  patent  was  afterwards  gn 
dated  2Sth  August,  1843.  That  patent  was  extended 
/  August,  1SG0,  for  7  years. 

;  The  facts  of  the  caso  of  R.  R.  v.  Trimble  nre,  tlial 
'  the  pntont  of  2Sth  August,  1840,  for  an  improvomcii 
■,  been  issued,  blit  before  the  grant  of  tho  extended 
1  the  administrator  of  IIowc,  the  patentee,  assign 
51  Trimble,  by  deed,  dated  15th  September,  1834,  the 
\  iiitorcst  in  tbe  patent  of  1S4G,  for  thu  iinprovemcnt, 

:j  lie  held  in  the  other  pntonts.  So  that  Trimble  held  a 
titlo  under  tho  patent  for  the  iinprovemcnt  which  line 
I  mndo  subsequent  to  tho  original  deed  of  9th  July, 
i  and  Trimble's  right  to  the  extension  of  tlint  patent  1 
f  from  tho  conveyance  of  the  patent  by  the  deed  of 
September,  1854,  coupled  with  the  terms  ol  the  or 
deed,  which  were  sufficient  to  embrace  an  extension. 
Rnilrond  Company  claimed  under  nn  adverse  assign 
mndc  prior  to  the  assignment  of  15th  September, 
but  tlio  jury  found  thnt  such  prior  assignment  had 
abandoned  nnd  was  inoperative. 

In  tho  present  case,  so  tarns  the  issue  of  the  pnti 
concerned,  tho  question  is  simply  whether  the  nssigi 
nn  invention,  not  made  at  tho  time  of  tho  assignment, 

,  nssigniio  within  tho  meaning  of  the  Act  of  1S70,  sc 
not  whether  such  nssigneo  is,  after  tlio  pntont  hash 
issued,  mi  assignee  within  tho  meaning  of  sec.  30  of 
'same  act. 

In  the  controversies  in  tho  courts  respecting  tho  pat 
alter' it  shall  have  boon  issuod  for  tiic  invention  of 
qiindniplex,  tho  question  will  como  up  for  dotorminnt 


whether,  on  tho-  authority  of  tlio  cnso  in  10  Wallace,  an 
assignment  of  an  invention  beforo  it  is  made,  will  tnko 
.  legal  o fleet  after  tho  issue  of  tho  patent.  If  it  bo  liuld  to 
do  so,  tho  assignment  to  Harrington  being  prior  to  tho 
assignment  to  Prescott,  the  former  must  prevail  if  it  bo 
held  to  embrace  tho  invention. 

According  to  Judge  Story’s  decision  in  tho  case  of  Her¬ 
bert  v.  Adams,  4  Mason,  16  (quoted  beforo  in  this  brief,  p. 
10).  an  assignment  of  an  invention  not  patented,  takes 
oftcct  when  the  patentee  issued,  and  operates  by  way  of 
estoppel  against  the  assignor.  n0  is  probably  speaking  of 
an  invention  perfected,  although  not  patented.  It  is  set¬ 
tled  by  lator  decisions  that,  in  such  cnso  the  assignment 
acts  directly  on  tho  legal  title,  and  not  merely  by  way  of 
estoppel,  lint  it  is  nowhere  laid  down  that  where  an  in- 
tended  invention  is  assigned,  tho  assignment  will  take  legni 
o  ee  as  soon  as  the  invention  is  nindo,  and  bofore  patent 
•ss.,0.1.  l|,o  instrument  is  a  more  contract.  Nor  after 
tno  patent  has  been  issued,  would  the  assignment  have  a 
retroactive  efleet,  except  as  against  tho  assignor  himself. 

V  V  ,  e"'0!>ptive  effect,  see  Field  v.  Mayor  of  N.  Y. 

(0  N  \ .  no),  quoted  before  in  this  briof,  page  IX  » 

1  here  are  some  eases  in  which  tho  courts  will  probably 

cognize  die  dlst"lction  between  an  assignment  of  an  in- 

ven  ion  already  made  and  an  assignment  of  an  invention 
ot  jet  made.  According  to  Curtis  on  Patents,  this  dis¬ 
tinction  is  recognized  by  the  Patent  Act  in  the  clause  au¬ 
thorizing  the  issue  of  tho  patent  to  tho  assignee  (Curtis  on 
P  tents,  see.  183,  note  2).  I„  considering  this  question,  it 
horn*  ° lm,,ortnnt  to  "otieo  the  decisions  on  the  distinction 
bet  ee  grin  tot  a  patent  right  and  a  license,  ns  to  which'!, 

3  Storv°  1 no  ’  r’  St0r^’  5J3  >  w"8liburu  v.  Gould, , 
Cur  o’,  p7  lmy  lm°r>  v‘  Coming,  How.  210;  ! 
tmrtis  on  Patents,  see.  195.  *>> 

tinetL^vi  V'  ^'lrt18l,orn  (1™'B  Dig-  PP-  120,  403)  a  dis-.* 
meat  in  •  '"UJ°  ljot"'oe,>  »'»  assignment  and  an  agree*. S; 
soign  a  patont— that  tho  party  boldiug  tho  con- 


:  tract  had  no  authority  to  grant  liconsos :  that  the  patent 
must  iirst  bo  assigned  to  him.  See,  also,  Whoolcr  v.  Mc¬ 
Cormick,  4  Official  Gaz.  Pat.  C92. 

The  Attorney  General,  Pluck,  (Opinions  of  Attorneys 
General,  vol.  0,  p.  403,  Nov.  28,  lsfiO)  did  not  recognize 
the  distinction  now  in  question.  Referring  to  a  contract, 
whereby  A.,  an  inventor,  stipulated  with  certain  parties 
thnt  they  should  have  the  ownciship  »f  all  inventions  oi 
improvements  which  he  might  thereafter  make  upon  certain 
patents  hold  by  them,  Attorney  General  Black’s  opinioi 
was  that  under  that  contract  tho  parties  referred  to  won 
entitled  ns  assignees  to  have  the  patent  for  an  improveinem 
nindo  by  A.  issued  in  their  own  names,  although  tho  in 
ventor  demanded  the  issue  of  tho  patent  to  himself.  Tliii 
opinion  would  probably  lie  held ’by  the  Courts  to  be  erro 
\  neons.  Seo  tho  argument  ywsf,  p. 

The  Assignment  to  Harrington,  4th  April, 

■  1871,  whether  it  embraces  the  Qiualrwples. 
in  its  terms. 

An  important  question  is,  whether  the  assignment  ot  4tl 
April,  IS71,  contains  words  sufficient  to  embrace  the  quad- 
ruplex  system.  The  partnership  contract  of  1S70  does  no 
contain  words  importing  a  grant  or  assignment,  but  is  n 
terms  a  mere' executory  contract.  Therefore,  it  cannot  now 
be  trentod  as  an  assignment,  under  tlm  Patent  Act,  sec.  33. 
And  it  seems  that  it  cannot  lie  treated  as  an  assignment 
under  sec.  30,  after  the  patent  has  been  issued,  but  that  it 
is  a  mere  contract  to  assign. 

The  assignment  of  4th  April,  1871,  may  bo  proved  to 
refer  to  (although  it  docs  not  recite)  the  partnership  agree¬ 
ment  between  Edison  and  Harrington  of  1st  Oetobor,  1870. 
The  instrument  of  ith  April,  1871,  speaks  only  of  an  agree¬ 
ment  on  tho  part  of  Edison  to  invent  “  instruments  and 
machinery  that  should  successfully  i  1  ccoi  o  c  11)  do  el¬ 
ope  into  practical  use  the  Little  or  other  system  of  auto¬ 
matic  or  fast  system  of  telegraphy,  and  subsequently  to 


VI'  l,uliecc  81,011  instruments  and  machinery,  bv 

adding  thereto  such  further  inventions  ns  experience  should 
demand  and  my  ability  as  an  inventor  and  electrician 
might  suggest  and  permit.” 

Tlio  contract  of  1st  October,  1870,  was  not  recorded  at 
the  date  of  the  assignment  from  Edison  to  Prescott.  19th 
August,  1874. 

It  will  bo  observed  that  the  assignment  of  4t|.  April 
1871,  does  not  specifically  rofor  to  tlio  contract  of  1st  Octo- 
;ior,  1870,  nor  to  any  contract  as  having  been  mndo  in  writ- 
"«'•  0,1  ‘'cf erring  to  tlio  contract  of  1st  October  1S70  it 
vdl  bo  found  to  include  all  of  Edison’s  future  inventions’ of ' 
my  kind,  except  such  as  were  included  in  certain  contracts 
letwecn  Edison  and  the  Gold  and  Stock  Co.  Tlio  contract 
'raph  L°",lnC<l  t0  ,,‘v0l,t,0"s  feinting  to  tlio  electric  tolc- 

Jhe  Quadruple*  is  not  a  «  fast  ”  system  of  telegraphy, 
Iit/un  the  meaning  of  the  deedofith  April,  1871. 

Tlie  automatic  system  of  telegraphy  is  called  a  “  fast  ” 
yS,L  bc  L  fl  B  e  t  be  g  b  ikon  ami  closed  bi¬ 
fid!!^;,  0p0M  ii0"  •iS,  1,0,f0,'mc(1  «“•«*  Kfentc'r 

ft£,  .,SrSS:blC  f  I”  “I!  systems 

1  tclegu.pl, y_ other  than  the  automatic,  the  speed  of  the 
..mem, s  ion  limited  by  the  capacity  of  the  operator’s 

ltcn nst  s  ‘  V  “  Uy  °r  ^  b0iml  the 

uto  nil  IC  system,  having  the  advantage  of  machine  over 
and  labor,  is  called  the  “  fast  ’’  system 
itlf,r:r “  '“0t,.tm",S",ittud  br  *1'°  Qu"<ln.plox  system 
•stem  o.  the  1"  'tiS  ^ 11,0  U™C  0r  tllu 

issioii  0t  101'°  16  Mjr  ndditiomi1  Sliced  in  ti.o  trans¬ 

it  has  for  several  years  past  been  customary  to  sneak  of 
o  automatic  system  as  -  the  automatic  or  iLt  system.” 


Many  instances  aro  given  in  the  brief  of  Messrs.  Ashton, 
Lowory  &  Doubling,  pages  18  to  27.  On  the  other  hand, 
Mr.  Harrington  rotors  (Ilarrington’s  Brief,  pages  10  to  ID) 
to  articles  in  “  Tho  Journal  of  tlio  Telegraph  ”  and  tlio 
“  Tho  Telegrapher,”  in  which  the  Quadruplox  system  is 
ombraced  in  tho  general  description  of”  last  systoms.” 

Mr.  Harrington  argues  (pugo  21)  that,  although  in  some 
eases  “  automatic  ”  and  “  fast  ”  have  been  used  as  appar¬ 
ently  synonymous,  yet  that  has  only  been  by  parties  inter¬ 
ested  in  some  systom  of  automatic  telegraphy  which  they 
puff  ns  ”  the  fust,”  and  it  is  observed  that,  in  this  souse,  Mr. 
Harrington  has  himself  call  tho  “  Little  ”  system  ”  the  fa  el 
system.” 

Many  of  tho  citations,  however,  in  tho  brief  of  Prescott's 
connsol  from  telegraph  litornturo  do  not  appear  to  be  open 
to  that  criticism. 

Tho  words  in  the  recital  of  the  assignment  of  4th  April 
1871,  “  the  Little  or  other  system  of  automatio  or  fast  ays 
tem  of  telegraphy''  relate  solely  to  automatic  telegraphy— 
tho  word  ‘‘automatic”  is  treated  therein  ns  equivalent  tc 
”  fast.”  And  it  is  customary  to  so  explain  what  is  meant 
by  “  automatic  telegraphy,”  as  the  word  11  automatic  is  o 
itself  insnllicient  to  describe  or  characterize  the  system. 

“  Automatic”  is  defined  by  Webster  thus!  "  Having 
the  power  of  moving  itself— applied  to  machinery.”  “  Tin 
term  automatic  is  now  applied  to  self-acting  machinery,  oi 
such  as  has  within  itself  tho  power  of  regulating  entirely  iti 
own  movements,  although  tho  moving  force  is  derived  from 
without.”  In  the  brief  of  Prescott’s  counsel,  citations  ar< 
made  (Brief,  p.  1C)  from  tho  report  of  the  National  Tclo 
graph  Company  in  1807,  which  contains  tho  phrase,  “/«« 
or  automatio  telegraphy 

On  pngo  20  of  tho  eiitno  brief,  is  a  quotation  from  t\v< 
Reports  of  the  Postniastor  Gonornl,  speaking  of  “  the  faa 
or  automatic  system.” 

In  tho  sa.no  brief  (p.  20),  rcforouce  is  made  to  the  eon 
tract  between  Harrington  and  Little,  dated  September  22d 


1871,  respecting  wlmt  is  tliero  described  as  “a  system  of 
automatic  or  fast  telegraphy” 

,Tho  circular  of  the  Automatic  Telegraph  Oo.,  Jamiarv 
-Sth,  1874,  is  also  referred  to  ns  containing  the  passage, 
concerning  tli o  automatic  or fast  si/slcm." 

And  Prescott’s  counsel  make  sovoral  quotations  from 
publications  relating  to  the  electric  telegraph,  to  show  that 
tlio  rfiyrfea.  or  “ quadruple*”  system  is  not  therein 
Tltof'o  ^S^tc,n(Pri“tcd  Brief  of  Prescott’s  com, sol, 
the  Pm  f’  2f  '  r°"  1>ns°  24  18  “  ,‘orurcilco  to  the  report  of 
the  Postmaster  General  in  1872,  speaking  of  «  duplex  »  as 
doubling  the  capacity  of  lines,  and  of  the  “  fast”  or  auto- 
mclw  system,  by  which  one  wire  is  made  to  do  the  work 

rer™",^tllrlr"<1,  Mr.  Harrington  (Brief,  pp.  18, 10) 
efeis  to  The  Telegrapher,”  September  20th,  1874,  Jami- 
TeW  lctl*>  1371,  and  “The  Journal  of  the 

Teleginpli,  September  15th,  1874,  where,  in  speaking  of 

dunlcvCo’"8,’  01 1  fllSt  tc,t‘KrnP,ly>”  the  nutonmtie  and  the 
du,,!^  „  e  referred  to  ns  if  they  were  both  fast  systems. 

JZJEzzr’  '*  "*"  l“"  ■ — “«■ 

Court' Ml  th°  e0r"'et,°"  °f  ",e  '"ctrument  is  for  the 
o.  w  ’  "07':",eIcSS'  W"«  'ta  aid  the  testimony 

pi  t  2  IT  l0?1"'"  'eTr,"6,0l'nrt  (i  P”reo,ls  011  Contracts, 

Dnv  V  Still’  Vrc'TT"  8  D,fJ-  Agreements,  B,  see.  50  ; 

Hay  .Stillman,  MS.  Giles,  ,T.  Md.  1850). 

Where  certain  terms  are  used  in  a  grant  which  have  a 
''ell  known  general  meaning,  that  wilUo  adopted,  unless 
appears  that  a  different  meaning  was  intended  hr  them 
(per  Ingorsoll,  J.  Day  v.  Cary,  ut’e  Dig!  p.  S,  1  ^ 

As  to  the  Appeal  to  the  Secretary  of  the 
Interior . 

.assssss  i 


duties  respecting  tho  granting  ami  issuing  of  patents,  which 
heroin  are  or  may  hereafter  ho  by  them  directed  to  bo  dono.” 
Upon  this  clausa  a  question  arises  whether  the  Commis¬ 
sioner  is  to  act  ns  he  may  bo  directed  by  tho  Secretary  of 
tho  Interior,  in  any  special  case,  without  exorcising  his  own 
judgment  in  tho  matter. 

Supposing  tho  Secretary  of  the  Interior  can  entertain 
tho  appeal  from  tho  decision  of  tho  Commissioner  in  tins 
case,  directing  tho  principal  examiner  to  issuo  tho  patents 
to  Edison  and  Prescott,  can  the  Secretary  of  tho  Interior 
order  tho  examiner  to  issue  the  patents  to  Edison  alone,  or 
to  Edison  and  Harrington  jointly,  and  in  that  case  can  tliero 
bo  an  appeal  from  that  order  to  the  Supremo  Court  of  tho 
District  of  Columbia?  An  appeal  is  given  to  that  Court 
by  tho  act.  of  1870,  see.  4S,  from  tho  decision  of  the  Com¬ 
missioner  in  the  cases  thoroin  referred  to;  but  no  appeal  is 
given  to  or  from  tho  Secretary  of  tho  Interior,  in  any  case. 

Tho  Patent  Act,  see.  52,  provides  “  that  whonovor  a 
patent  or  application  is  refused  for  any  reason  whatever, 
cither  by  the  Commissioner  or  by  the  Supremo-Court  of  the 
District  of  Columbia,  upon  appeal  from  the  Commissioner, 
tho  applicant  may  have  remedy  by  bill  in  equity  see  re¬ 
marks  on  this  section,  Hull  v.  Commissioner  ot  Patents, 
Supreme  Court,  D.  C.  Ollicial  Gazette,  vol.  7,  p.  o59). 

Under  this  net,  a  suit  may  be  brought  by  Edison  against 
Prescott  to  test  the  question  whether  Edison’s  application, 
as  it  now  stands,  is  lawfully  refused.  If  the  a  lj  I  t  on 
bo  in  favor  of  Edison,  the  Commissioner  wd  bo  thereby 
“ authorized”  to  issuo  the  patent  to  him.  Tin*  suit  may 
bo  brought  in  a  Circuit  Court  of  the  United  States  on 
notice  to  adverse  parties.”  But  the  question  before  t  o 
•  Court  in  such  case  will  not  bo  as  to  the  equities  of  lie  - 
ties.  but  will  iio  as  to  tho  legal  right  of  Edison  to  demand 
the  issuo  of  tho  patents  to  himself  alone. 

By  tho  act  of  1880,  sec.  1,  it  «•  made  the  duty of 
Commissioner  of  Patents,  “  under, the  thredums  of  theSe c- 
retan,  of  State,”  to  superintend  and  perform  all  acts  touch- 


ingtho  granting  of  patents.  Tho  Secretary  of  the  Interim 
therefore,  merely  tnkos  the  place  of  tl,o  Secretary  of  Stat 
mulor  the  former  law.  J  ' 

on  J,la„Cft  f'1’  lm>  eh- 108  e  state.  „t  Large 

dJ.  ),  enacts  that  the  Secretary  of  tl.o  Interior  shall  oxer 
e.»e  and  perform  all  the  acts  of  sujternhwn  ,n„l  anneal i, 
legard  to  the  oflico  of  Commissioner  of  Patents  now  exer 
cised  by  the  Secretary  of  State  ” 

1,10  -  'O  whether  it 

JsASBSfr"  *  “n  lr0nr’  Att0r"^  Gone™' 

timates  I  ,  f  AMo™cys  Ge"eral-  vol. 13,  p.  20),  ho  in¬ 
fer  revisinir  tl'.o'T  ''VT'*  ,nndo  ““I**  Provision 
ca  es  I,  7  t.1'0,.(I.C0l8,0,ls  of  ‘>'0  Commissioner  in  proper 
C  Bio  .  oV  mp  m.J'’.tl10  ImrticS  ™'"l>l«iningof  the  dc- 

. 

&-^“S=SSs: 

ignatnro  to  a  patent  l  a  ?PW  S?"!"":y  withhold  his 
»■. » *» ,« «», . 


In  Whitoloy  v.  Fisher  (4  Fish.  Pat.  Cns.  248),  an 
tion  against  the  Commissioner  lor  rotusmg  to  issue 
patent,  it  was  held  by  the  Supremo  Court  ot  the  Disti 
of  Columbia  that  the  duty  of  issuing  patents  devolves  tt| 
the  Secretary  of  the  Interior— the  duty  ot  countersign 
and  affixing  the  seal  of  office  to  a  patent,  upon  the  Com. 
sioner.  .... 

On  referring,  however,  to  section  31  of  tlie  net  ot  u 
it  will  bo  seen  that  it  is  the  Commissioner  who  is  to  doi 
oti  the  application  lor  the  patent.  “  The  Commissu 
Ml  came  ««  examination  to  bo  made  of  the  alleged 
invention  or  discovery,  and  if, on  such  examination,  it, 
appear  that  the  claimant  is  justly  entitled  to  a  paten 
dor  the  law,  and  that  the  same  is  sufficiently  use lul  ami 
portent,  the  Commissioner  shall  issue  a  patent  theiefo, 

The  act  (section  21)  retpiires  patents  to  be  signet 
the  Secretary  of  the  Interior  and  countersigned  by  the 
missioner.”  In  1  lull  v.  Commissioner  ol  Patents  (7  Ot 
Gazette  Patents,  561),  Judge  01b.  says  that  the  Sec 
of  the  Interior  really  controls  the  issuing.  . 

the  same  case,  says :  “It  is  the  duty  ot  the  Commrn 
alone  to  say  whether  the  patent  shall  be  allowed 
If,  however,  the  Secretary  ol  the  Intone,  should 
opinion  that  he  has  the  power,  and  th  it  it  is 
any  particular  ease  to  exercise  that  powei,  o  om 
merits  of  any  decision  of  the  Commissioner  o 
might,  upon  such  revision,  decline  to  sign  the i  mUi  it  * 
by  the  Commissioner,  lie  might,  at  the  b 
gLt  to  the  Commissioner  that  he  should  reeonsulc.  th 
If,  upon  such  reconsideration,  ho  should  111 

conclusion  ns  the  Secretary,  then .the  patent  woiddbc 
but  if'  the  Commissioner  should  rota...  ;>6.to‘  ^  l 
no  patent  would  bo  issued,  and  the  applicant  «o,,ld 
to  Ids  remedy  by  appeal  to  the  Supreme  Court  of  tl, 
triet  of  Columbia,  or  an  appeal  under  section  52, 
appears  to  ho  incompatible  with  the  idea  P 

jurisdiction  in  the  Secretary  of  the  Interior.  , 


iSyksp- 


ary  power  to  withhold  his  signature  to  a  patent  which  tho 
Commissioner  lias  legally  ordered  to  bo  issued,  can  bo  testod 
by  mandamus.  A  writ,  of  mandamus ,  however,  will  not 


be  allowed  by  tho  Supremo  Court  of  the  District  of  Colum¬ 
bia  against  tho  Commissioner  of  Patents,  whore  the  lnw 
submits  tlie  subject  to  his  opinion  (U.  S.  v.  Bigolow,  7  Off. 
Gnz.  Pat.  001). 

It  may  be  contended  that  the  signature  of  the  Secretary 
is  required  merely '  for.  the  ptirposo  of  verification.  Tlio 
question  whether  lie  can  refuse  to  sign  a  patent  which,  on 
tho  faco  of  the  proceedings,  appears  to  lmvo  been  properly 
issued,  may  bo  of  importance  in  interference  eases,  whore  a 
party  having  a  patent  may  desiro  to  prevent  tho -issue  of 
another  patent  to  his  adversary.  That  might  present  n 
proper  case  for  an  application  for  a  mandamus,  ns  tho  ap¬ 
plicant  would  otherwise  bo  without  remedy. 

The  Secretary  niny  with  propriety  examine  jurisdictional 
questions,  and  refuse  his  signature  whore  tho  Commissioner 
has  exceeded  his  jurisdiction.  Even  if  tho  Secretary  lias  a 
discretionary  power  in  relation  to  tho  grant  of  a  patent,  it 
does  not  follow  that  tho  Commissioner’s  concurrence  can  bo 
dispensed  with,  seeing  that  section  31  of  the  act  directs  him 
to  decide  the  question. 

Allowing  that  tho  Secretary  has  tho  right  to  withhold 
his  signature,  in  a  case  where  tho  Commissioner  has  noted 
within  his  jurisdiction,  it  is  to  be  presumed  that  ho  would 
not  do  so  in  a  doubtful  case,  and  that,  in  deciding  the  ques¬ 
tion  whether  lie  should  refuse  to  append  Ids  signature,  lie 
would  not  undertake  to  exercise  full  appellate  jurisdiction 
and  receive  any  additional  ovidcnco  in  the  case,  but  would 
merely  decide  upon  tho  enso  ns  mndo  beforo  tho  Commis¬ 
sioner.  Even  wlioro  hppellnto  jurisdiction  is  given  to  tiio 
Supreme  Court  -of  the  District  of  Columbia,  the  enso  is 
heard  on  tho  ovidunco  beforo  tho  Commissioner. 

The  Secretary  of  tho  Interior  might  with  propriety  sug¬ 
gest  to  tho  Commissioner  that  thoro  nro  somo  important 
points  wliioli  wore  overlooked  in  tho  nrguinont'boforo  him, 
and  that  thoro  should  bo  a  rehearing  on  those  points  (seo 
post,  p.  ). 


The  Equities  of  the  Case. 

The  contract  between  Edison  and  Prescott,  dated  19th 
August,  1874,  provides  that  they  shall  have  an  equal  inter¬ 
est  in  “  any  future  improvements"  mndo  by  elthsr  party. 
And  Prescott  agreed  to  pay  “all  the  future  expenses  and 
cost  of  specifications,  drawings,  models,  Patent  Office  tees  . 
and  patent  solicitors’ and  agents’  fees,”  &c.  The  W.  U. 

Co.  claim  that  tlioy  employed  Edison  to  mako  the  invention 
for  thorn,  and  they,  at  tl.e  same  time  owning  the  principal 
patents  for  the  “duplex”  system,  and  that  they  gave  Inn. 
the  use  of  their  linos  and  telegraph  apparatus  for  the  ex¬ 
periments,  and  that  Prescott  (tl.cir  electrician)  rendered 
much  valuable  assistance  therein;  also  thatHarr.ngton 
was  cognizant  of  Edison’s  relations  with  the  VT.  0,  and  ot 
ids  efforts  to  make  tho  invention  of  the  qimdruplcx  foi 
them  and  tl  t  1  e  =el  .o  ejections,  before  the  pay- 

mC  ^1’  -vcrul 

reasons  are  urged  why  it  does  not  affect  Prescott,  viz. . 

1.  That  it  does  not  in  torms  embrace  the  quadruplex. 

2.  That  the  record  of  that  contract  was  not  legal  notice  of  . 

its  contents — there  being  no  legal  authority  to  .e- 
cord  it  when  it  was  recorded. 

madcmid  consequently  cannot  be  regarded  as  an 
“  assignment."  .  ... 

the  assignment  of  10th  August,  (;hUl 

that  if  tlio  equities  of  t'.w  case  be  found 

the  Commissioner  could  ,  d  ^ 

that  Harrington  has  no  case  to  proxi  b  ■ 

1  assignment' to  Prescott. 


k 


As  to  tlio  rail  valno  of  Prescott’s  engagement  to  grant 
to  Edison  onc-lifllf  port  of  nil  inventions  of  improvements 
which  miglit  he  mndo  by  him  (Prescott),  it  is  impossible  to 
estimate  it.  Neither  can  wo  form  n  correct  judgment  of 
the  valuo  of  Prescott’s  assistance  in  the  development  of  the 
invention  with  the  nid  of  the  telegraph  nppnrntns  nnd  lines 
of  tho  17.  U.  Co.,  nor  can  wo  make  nil  accnrate  estimate  of 
the  importance  of  the  fact  that  the  17.  IT.  owned  tho  “Du¬ 
plex  ’’  patents.  Prescott’s  connection  with  tho  17.  U.  might 
possibly  ho  of  great  advantage  to  Edison.  Edison  was  not 
drivon  by  poverty  to  mako  tho  contract  with  Prescott. 

With  respect  to  tho  point  tliut  tlio  contract  between 
Edison  and  Prescott  is  a  partnership  contract,  dissolublo 
at  tho  will  of  either  party,  and  therefore  that  Edison  could 
rovokc  tho  authority  ho  had  given  to  the  Patent  Office  to 
issue  the  patents  to  himsolf  nnd  Prescott  jointly. 

In  tho  first  place,  it  is  clonr  that  Edison  cannot  nullify 
the  assignment  to  Prescott.  That  remains  oven  if  tlio  con¬ 
tract  for  the  joint  disposal  of  tho  property  lie  broken  up. 
And,  secondly,  it  is  true  that  tho  nnturo  of  the  contract 
ail'ords  a  good  reason  for  Edison’s  revocation  of  tlio  author¬ 
ity  given  to  the  Patent  Office  in  favor  of  Prescott.  But 
then,  no  reason  whatever  need  be  given  to  tho  Patent 
Office  by  Edison  for  breaking  his  engagement  with  Pres¬ 
cott,  that  he  (Edison)  would  request  the  issue  of  tho  pat¬ 
ents  in  a  particular  form.  Edison  had  tho  absolute  right 
to  withdraw  or  modify  his  applications  for  tho  patents  in 
that  form. 


Withdrawal  of  the  Applications  for  the  Pat¬ 
ents,  and  Renewal  of  Applications,  ivith 
Amendments. 

In  tho  argument  before  tho  Secretary  of  tlio  Interior, 
General  Butler  insisted  that  tho  patents  should  be  issued 
neither  to  Edison  and  Prescott,  nor  to  Edison  nnd  Har¬ 
rington,  but  to  Edison  alono.  Before,  however,  tlio  patents 
can  ho  issued  to  Edison  alone,  an  application  for  such  is6UO 


must  bo  filed  by  him.  Tho  present  application  istortli 
issue  to  himsolf  and  Harrington. 

If  the  Commissioner  shall  refuse  to  rehear  tlio  case  o 
tho  now  points,  or  should,  upon  such  rehearing,  adhere  I 
his  former  opinion,  and  if  it  shall  then  he  considered  tin 
no  appeal  lies  to  tlio  Supremo  Court  of  tlio  District  i 
Columbia,  it  may  bccomo  advisable  *  llJ 
all  tho  applications  for  the  patents,  and  file  fresh  npphe 
tions,  with  amendments. 

An  application  for  a  patent  may  be  withdrawn  by  tl 
inventor  and  renewed  in  amended  form.  Under  the  A 
of  1S30,  sec.  7,  it  was  a  common  practice  to  withdraw  t 
application  in  order  to  get  hack  part  of  the  too.  The  rig 
to  withdraw  tho  fee  was  taken  away  by  tho  Act  ot  1801, 
88,  sec.  9.  Upon  tho  Act  of  1330  Attorney  General  Cu 
ing  gave  an  opinion  that  “every  applicant  lor  a  patent 
a  riahl  to  withdraw  his  application,  and  demand  the 
torntion  of  two-thirds  of  the  patent  fee,  altoi  Ins  app 
“on  is  complete  ...  1  -11  b  '  to1 

been  had  on  his  application  as  after  't  f 

■  (Tarrish  &  Keeler’s  Case,  7  Opm.  391 ;  L  i"  »  digest, 
Tho  right  to  withdraw  the  application  remains  just 
same,  although  no  part  of  the  lee  is  now  returned,  li  e 

ventor  may  choose  to  make  essentnil  aniom  inon  8  ' 

. . .  1.  -  ■:*,!  r. 

his  assignee.  •  .  p,,, 

u,,dn  |« 

‘  tlio  formor  applications  which  wo^  l  j  „ 


claim  of  Prescott  will  then  rest  entirely  on  the  assignment 
of  19th  August,  1874,  end  tho  authority  thoreby  given  to 
tho  Commissioner  of  Patents  to  issne  the  patonts  to  Edison 
and  Prescott.  That  authority  is  confined  to  tho  applica¬ 
tions  numbered  91  to  100,  for  although  it  is  declared  that 
tiio  other  inventions  therein  referred  to  “  nro  included  in 
tin's  present  agreement,”  tho  authority  and  request  to  tho 
Commissioner  does  not  embrace  them. 

As  to  the  effect  of  the  withdrawal  of  the  applications 
for  tho  purposo  ot  presenting  amended  ones.  It  may  be  a 
breach  of  tho  agreement  of  10th  August,  1871,  in  which  it 
is  recited  and  declared  tiint  Edison  “has  oxccutcd  oris 
about  to  oxecute  applications”  for  patents,  nnd  tiioso  appli¬ 
cations  nro  specified,  numbered  nnd  dated  19th  August, 
1S71.  Put  tho  Commissioner  has  nothing  to  do  witli  tho 
breach  of  coreiinnt.  When  the  new  applications  nro  filed 
with  now -specifications,  Prescott  may  possibly  contend 
that  tiie  inventions  described  thcroin  nro  embraced  in  the 
assignment  of  19th  August,  1874,  nnd  that  although  the 
several  applications  may  be  consolidated  into  a  fewer  num¬ 
ber,  nnd  may  ombrnco  inventions  made  prior  to  thoso  de¬ 
scribed  in  the  applications  numbered  95  to  100,  nnd  other 
inventions  made  subsequent  to  the  dnto  of  tho  assignment 
19tli  August,  1871,  yet  that  under  that  assignment  lie  is 
legal  nssignoo  of  a  tnoicty  of  tho  inventions  specifically 
referred  to  in  that  assignment.  If  the  amendments  were 
merely  colorable,  tho  legal  title  of  the  assignee  of  the  inven¬ 
tion  might  not  bo  affected.  But  if  tho  pntents  nro  in  part 
for  inventions  not  embraced  in  the  assignment,  it  will  bo 
for  a  court  of  equity  to  grant  appropriate  relief  against  tho 
inventor.  Or  where  tho  invontor  lias  obtained  the  patent 
for  tlin  purposo  of  dofratiding  his  assignee,  tho  patont 
might  be  repcnlcd  on  scire  facias  (soo  Mowry  v.  AVhitnoy, 
11  Wall.  131),  and  the  invontor  could  bo  compelled  by  dc- 
creo  of  a  court  of  equity  to  make  the  proper  application  for 
a  patont.  Equity  can  roliovo  whore  a  party  fraudulently 
or  without  duo  authority,  blends  his  own  property  with 
that  of  another. 


As  to  tho  effect  of  tho  withdrawal  of  tho  npplientio 
Whether  it  could  bo  considered  ns  an  abandonment 
law’s  Dig.  p.  163,  “Withdrawal  of  application,  effect 

Tho  Patont  Act,  section  35,  provides  that  “  wliei 
application  fora  patent  has  boon  rejected  or  t  li 
prior  to  tho  passage  of  this  net,  the  applicant  shall  hav 
mouths  from  the  dato  of  such  passage  to  renew  his  np] 
tion  or  to  filo  a  new  one,  and  if  ho  omit  to  do  oithei 
application  shall  bo  hold  to  have  been  abandoned.  1 
the  hearing  of  such  renewed  application,  abandonment 
bo  considered  nB  n  question  of  fact.” 

law’s  Dig.  p.  153,  sec.  5 :  “  The  withdrawing  an  f 
cation,  nnd  receiving  back  tho  allowed  part  of  the  p 
foe,  will  bo  considered  as  a  final  abandonment  of  the 
ther  prosecution  of  the  claim,  *  *  *  which  ennn 

•  revived  by  any  now  application”  (Mowry  v.  Barber, 
App.  Ons.  Morrell,  .T.,  D.  C.  1858). 

Seo.  0.  “The  withdrawal  of  an  application  alter  ri 
of  part  of.  tho  patont  feo  is  not  itself  an  abnndonmc 
dedication  of  one’s  invention  to  tho  public,  but  is  an  c 
ocal  act,  to  be  interpreted  by  surrounding  circuinsti 
and  to  bo  affected  upon  a  second  application  by  the  f 
quent  conduct  of  tho  party,  his  diligenco  or  ins  nogloc 
delay,  in  tho  same  manner  as  bis  conduct  is  to  be  we 
in  regard  to  an  original  application  (Wickershain  ' .  o 
App.  Cob.  Merrick,  ,T.;  D.  O.  1859).  . 

Seo.  7.  The  samo  judge  held,  in  1800,  m  tho  ci 
Dcdcrick  «  parte,  MS.  (App.  Cas.),  that  where  the 
withdrawing  nu  application  took  no  further  action 
number  of  years.  “  a  subsequent  application  tor  a  pan 
the  same  invention  will  bo  refused,  on  the  ground  ol 
abandonment.” 

Seo.  8.  And  Judge  Merrick  also  held  that  a 

might  filo  another  application  several  years  after  Ins 
drowal,  if  that  was  occasioned  by  a  mistaken  reject 

tho  Patout  Office,  although  in. tho  moon  tiino  the  my 
liad  gone  into  public  use,  nnd  that  tho  second  nppl.i 


by  operation  of  law,  relates  back  to  the  date  of  the  first  ap¬ 
plication,  so  ns  to  cat  off  the  forfeiture  which  otherwise 
would  have  happonod  by.  the  long  intermediate  public  use' 
(Hayden  ex  parte,  MS.  Merrick,  J.,  1800). 

iVo  may  contoud  that  the  Commissioner  made  a  mis¬ 
take  in  refusing  to  issue  the  patents  to  Edison. 

Dunlop,  J.,  held  in  Simpson  ex  parte,  MS.  (App.  Cas. 
ISO! ;  Law’s  Dig.  p.  154,  sec.  11)  that  the  renewed  appli¬ 
cation  in  such  case  should  bo  made  within  two  yenrs. 

'  Patent  Office  Register,  April  13th,  1873, p.  41 1,  Acting 
Commissioner  of  Patents  Timelier  refers  to  the  practice  of 
tlie  Office  in  relation  to  “  old  rejected  and  withdrawn  cases, 
in  the  Office,”  as  pendente  lite  embodying  claims  not  finally 
adjudicated,  and  presenting  tho  proper  channel  for  semiring 
rights,  not  to  bo  held  ns  abandoned,  except  upon  proof  of 
the  fact.  So  they  wero  regarded  by  the  Office,  for  some  of 
them  wero  from  time  to  time  revived,  and  nllowcd  to  go 
to  patent. 

lie  refers  to  tho  Patent  Act  of  1S70,  sec.  35,  ns  sanction¬ 
ing  tlint  practice,  mid  cites  Godfrey  v.  Emncs  (l  Wall.  317) 
ns  deciding  tlint  a  now  application  is  to  be  considered  ns  a 
continuation  of  li  former  one.  The  Court  there  held  :  “  If 
an  applicant  lor  a  patent  withdraws  lus  application  for  a 
patent,  intending  at  the  time  of  such  withdrawal  to  filo  a 
new  petition,  and  accordingly  does  so,  tho  two  petitions 
are  to  be  considered  ns  parts  of  tho  same  transaction,  and 
both  ns  constituting  one  continuous  application.” 

For  a  construction  of  section  35  of  the  net  of  1S70,  sco 
Marsh  v.  Sayles,  5  Fish.  010 ;  2  Off.  Gaz.  Pat.  340 ;  2  Biss. 
321. 

The  proper  course  to  pursue  will  be  to  withdraw  all  tho 
applications,  and  then  blond  tho  invention  described  in  the 
early  application  made  by  Edison  witli  tlioBo  described  in 
the  specifications  referred  to  in  tho  contrnct  of  1 0th  August, 
1874,  and  also  blend  with  thorn  the  inventions  which  had 
not  boon  perfected  at  that  date.  Out  of  these  consolidated 
together,  mnko  one,  two  or  more  specifications. 

As  to  what  an  inventor  may  claim  in  ono  patent,  sco 


Wheeler  v.  McCormick,  4  Off.  Gaz.  Pat.  092.  In  tho  same 
case,  it  is  held  that  an  invontor  may  have  distinct  patents 
for  several  distinct  devices,  although  lie  may  have  included 
thorn  all  in  one,  making  a  separate  claim  for  each  dovico 
(Rules  of  tho  Patent  Office,  15, 10).  Where  several  inven¬ 
tions  relating  to  the  same  subject  are  necessarily  connected 
each  with  the  other,  they  may  bo  claimed  in  ono  applica- 

Two  distinct  improvements  in  tho  same  macliino  may 
ho  jointly  applied  for  and  covered  by  ono  patont  (Adams  v. 
Jones,  2  Pittsb.  73;  Abbott’s  National  Digest,  vol.  0,  p. 
355,  sec.  198.  Sec,  nlso,  tho  following  cases :  Emerson  v. 
Ilogg,  2  Blotch.  1 ;  Pitts  v.  Whitman,  2  Story,  009,  021  ; 
Moody  v.  Fiskc,  2  Mason,  1 12). 

In  Abbott’s  National  Digest,  vol.  0,  titlo  Patents,  secs. 
193  to  223,  innny  decisions  ill  abandonment  arc  collected, 
amongst  others  tho  following:  §  220.  An  inventor,  whose 
application  wns  rejected  and  withdrawn  ■■■  1851,  delayed 
to  renew  it  until  1SC9.  In  1S59,  a  patent  was  granted  to 
nnothcr  party.  Held,  a  case  ot  abandonment.  (Marsh  \. 
Sayles,  supra).  §  213.  An  application  was  rejected  ;  ten 

yenrs  afterwards  a  now  application  ■■■■•J"  . 1 

fee  paid;  in  the  mean  time  the  invention  had  gono  into 
public  use.  Held,  nn  abandonment  (Bovin  v.  East  Hamp¬ 
ton  Bell  Co.  9  Blotch.  50 ;  6  Fish.  223). 

Tho  above  cases  seem,  to  show  that  it  would  be  safe  to 
withdraw  Edison’s  present  applications,  with  a  view  to  the 
presentation  of  amended  applications,  ns  above- suggested. 

It  is  understood  that  there  is  nn  important  application 
now  pending,  which  wns  filed  in  tho  year  1873,  on  tho  part 
of  Edison,  for  a  patent  for  devices  applicable  to  tho  qundrii- 
plex  system,  which  arc  not  embraced  in  tho  applications  in 
which  Prescott  is  interested.  This  invention  should  bo 
blended  with  those  of  later  ditto  on  the  new  applications  tor 

P  By  abandoning  the  presont  applications  and  specifica¬ 
tions,  and  obtaining  patents  on  n  new  set,  the  great  diffi¬ 
culty  in  relation  to  Prescott’s  claim  of  a  legal  titlo  to  ono- 


I 


half  of  tho  patents  mny  he  avoided.,  In  that  cnso,  instead  J 
of  a  legal  title,  which  it  would  not  ho  easy  to.  assail,  ho  will  £ 
have  only  a  claim  of  right  in  equity  to  enforce  tho  agree- 
incut  between  himself  and  Edison,  in  such  a  way  ns  to  ob¬ 
tain  some  interest  in  tho  patents  issued  on’  tho  substituted 
specifications. 

If  patents  should  bo  ohtainod  on  tho  specifications  now 
on  file— such  patents  being  issued  to  Edison  alone — Pres-  / 

cott  would  claim  a  moiety  under  tho  assignment,  and  insist 
on  bis  legal  ownership,  on  the  authority  of  Gaylor  v.  Wil¬ 
der  (supra). 

Prescott  would  refuso  to  join  in  n  suit  against  tho  W.  U- 
for  using  tho  in  volition .  If  a  suit  were  brought  by  Edison’s 
assignee,  it  would  bo  objected  that  no  assignment  could  bo 
made  by  Edison  without  Prescott’s  consent.  And  if  Edi¬ 
son  were  to  bring  suit  against  Prescott  mid  the  W.  U.,  tho 
defense  would  bo  tho  contract  for  the  sale  of  tho  invention 
to  the  W.  U.  On  the  whole,  thoroforc,  it  would  appenr  to 
ho  tho  best  policy  to  cut  adrift  from  the  present  position  in 
tho  Patont  Oflico.  .  .< 

A  question  remains  whether  Edison  would  bo  violating  $ 
tho  injunction  in  tho  New  Jersey  caso,  by  withdrawing  his 
present  applications  in  tho  Patont  Oflico  and  filing  fresh 
ones.  Tho  only  application  actually  pending  at  this  time, 
as  we  viow  tho  case,  is  that  of  Iinrrington.  Upon  tho  with¬ 
drawal  of  that,  tliero  will  bo  no  application  in  tho  Patent 
Otlice.  The  injunction  docs  not,  in  torms,  restrain  Edison 
from  taking  the  proposed  proceedings  in  tlio  Patent  Oflico. 


Decision  of  the  Commissioner  of  Patents 


DIRECTING  CERTAIN  LETTERS-PATENT 
ISSUE  TO  EDISON  &  PRESCOTT. 


SMITH  &  REDINGTOH, 
Of  Cou 


tion  of  Harrington,  who  nllogod  that  tho  patents  should 
-  bo  issued  to  Edison  und  himsolf,  instead  of  Edison  and 
Prescott. 

Tho  ease  presents  two  questions  for  consideration  : 

1.  Has  tho  Secretary  of  tho  Intorior  tho  power  to  lienr 
and  determine  whether  ho  will  oxccuto  tho  pntonts  to 
Edison  and  Prescott;  or  is  lie,  in  this  regard,  merely  n 
ministerial  officer  and  by  law  required  to  unite  with  tho 
Commissioner  in  tho  execution  of  tho  pntcntB  and  bound 
by  his  decision  ? 

2.  If  lie  has  sucli  power,  should  tho  letters  be  issued 
to  Edison  and  Prescott? 

Hpon  tho  first  point  it  is  proper  to  stato  thnt  it  has 
already  boon  determined  by  your  immediate  predecessor. 
He  decided,  aftor  full  and  elaborate  argument  by  tho 
ablest  of  counsel,  thnt  ho  had  such  power,  und  overruled 
the  motion  to  dismiss  tho  proceeding  for  tho  want  of 
jurisdiction  and  directed  the  parties  to  filo  written  briefs 
upon  the  merits.  Wo  suppose  thnt  his  action  mnkes  this 
question  res  adjiulicata. 

But  if  the  Hon.  Secretary  should  diflor  with  us,  then 
wo  insist  that  the  former  decision  was  correct.  Its  fur¬ 
ther  consideration  will  require  an  examination  of  tho 
legislation  of  Congress.  Section  441  of  tho  Revised  Stat¬ 
utes  charges  the  Secretary  of  tho  Intorior  with  tho  “su¬ 
pervision”  of  “patents  for  inventions.”  Section  4883  re¬ 
quires  that  all  letters  patent  shall  ho  signed  by  tho 
Secretary  of  tho  Interior;  and  section  481  provides  thnt 
“the  Commissioner  of  Patents,  under  the  direction  of  the 
“ Sccrctari/  of  the  Interior,  shall  superintend  or  perform  all 
duties  respecting  tho  granting  and  issuing  of  patents 
directed  by  law.”  The  first  duty  in  tho  order  of  time, 
and  tho  most  important  ono,  is  to  determine  whether  or 
not  the  applicant  is  entitled  to  a  patoiit.  . .  . 


If  this  is  to  bo  done  “under  the  direction  of  tho  Sec¬ 
retary  of  tho  Intorior,”  how  can  it  ho  said  that  lie  hns  no 
power  to  considor  tho  question  ?  Ho  is  tho  head  of  tho 
Interior  Department.  That  Department  is  ohargod  by 
law  with  tho  issuing  of  lettors  patent.  All  patents  are  to 
ho  signed  by  tho  Secretary  and  to  bo  granted  and  issued 
under  ids  direction.  •  Can  it  be  possible  that  ho  can  have 
no  voice  in  the  mattor?  Thnt  ho  is  a  mere  automaton, 
moved  by  some  othor  power  and  without  ability  to  con¬ 
sider  and  decide  for  himsolf?  Suppose  that,  by  some 
means,  by  inadvertence  or  otherwise,  a  patent  should  be 
executed  by  tho  Commissioner  for  tho  spread  of  soino 
contagious  disease,  must  the  Secretary  also  execute  it? 
He  certainly  must  if  ho  is  but  a  mere  ministerial  officer, 
and  is  bound  by  the  action  of  the  Commissioner ;  and  if 
lie  should  refuse  lie  could  ho  compelled  by  mandamus 
to  do  it. 

Wo  wholly  dissent  from  any  such  view.  We  suppose 
that  Congress  menut  just  what  it  said;  and  when  it  snid 
that  “  all  duties  respecting  tho  granting  and  issuing  of 
pntonts  ”  shall  bo  performed  by  the  Commissioner  “  un¬ 
der  tho  direction  of  the  Secretary  of  tho  Intorior,”  it 
meant  that  all  tho  duties  should  ho  thus  performed,  and 
did  not  mean,  ns  is  argued  by  counsel  for  Prescott,  that 
the  Secretary  should  be  charged  with  tho  duty  only  of 
seeing  that  tho  Commissioner  faithfully  discharged 
his  duties  and  did  not  refuse  to  make  n  decision. 

Sucli  a  limitation  of  tho  authority  of  tho  Secretary  is 
against  the  plain  language  of  tho  statute,  and  is,  as  we 
think,  in  conflict  with  tho  ruling  of  the  Supreme  Court 
in  an  nnulagous  case. 

In  Barnard’s  Heirs  v.  Ashley's  Heirs,  18  How.,  44, 
the  question  was  as  to  tho  power  ot  tho  Commissioner 
of  tho  General  Land  Office  to  review  a  decision  made 
by  tho  Register  and  Receiver.  Tho  court  said :  “Ac- 


«  COrding  to  the  conceded  foots,  it  ,s  insisted,  on  1  part 
«o?  Ashley  and  Craig,  that  the  -Register  and  Re  eivor 
„uvil,,  o,  duo  proof  and  examination,  rojectod  Bar- . 

“  nard  s  claims'  toFi  preference  of  entry  of  the  four  qnar- 
„ tor  sections,  lie  is  thereby  concluded  from  setting  hem 
«  up  in  a  court  of  equity,  because  the  Register  and  Re¬ 
ceiver  acted  in  a  judicial  capacity,  and  ‘heir  judgmwit 
tn  tm  imnea!.  is  conclusive  of  the  chum. 
..S:  cal  of  Jacksmi  v.’ Wilcox,  and  Lytle  ,  The 
‘•State  of  Arkansas,  are  relied  on  to  maintain  this  posi- 

“Tliis  power  of  revision  is  exercised  by  virtue  of  the 
»  act  of  July  4,1836,  §  1,  which  provides  ‘  that,  from  and 
“  after  the  passage  of  this  act,  the  executive  dutl°8  10" 
“prescribed,  or  which  may  hereafter  be  prescribed  by 
“  Faw,  appertaining  to  the  surveying  and  sale  of  the  pub- 
“  lie  lands  of  the  United  States,  or  in  anywise  respecting 
“such  public  lands,  and  also  such  as  relate  top 
“  claims  of  land  and  the  issuing  of  patents  for  nl  grn  « 

“  of- land  under  the  authority  of  the  Government  of  the 
“United  States,  shall  be  subject  to  the  supervision  and 
“control  of  tbe  Commissioner  of  the  General  Land 
..  Office,  under  the  direction  of  the  President  of  the 
“United  States.’  The  necessity  of  ‘supervision  and 
“  control,’  vested  in  the  Commissioner,  noting  under  the 
“direction  of  the  President,  is  too  manifest  to  require 
“  comment,  further  than  to  say  that  the  facts  found  in 
“  ,bis  record  show  that  nothing  is  more  easily  done  than 
“apparently  to  establish,  by  rz  parte  affidavits,  cult, va- 

“  tin.,  and  possession  of  particular  quarter  sections  of  land, 

“  when  the  fact  is  untrue.  That  the  act  of  1836  modi- 
»  ties  the  powers  of  Registers  and  Receivers  to  the  extent 
“  of  the  Commissioner’s  notion  in  the  instances  before 
“  us,  ice  hold  to  be  true.  But  if  the  construction  of  the 
“  act  of  1886  to  this  effieut  wore  doubtful,  the  practice 


:  under  it  for  nearly  twenty  years  could  not  be  disturbed 
without  manifest  impropriety. 

“  Tho  case  relied  on,  of  "Wilcox  v,  Jackson,  18  Pet., 

;  611,  was  an  ejectment  suit,  commenced  in  February, 

1 1880 ;  and  as  to  tho  acts  of  the  Register  and  Receiver  in 
‘allowing  the  entry  in  that  case,  tho  Commissioner  had 
1  no  power  of  supervision,  such  as  was  given  by  tho  act 
1  of  July  4, 1836,  lifter  the  cause  was  in  court. 

“  In  the  next  ense,”  (Lytlo  v.  Tho  Slate  of  Arkansas,) 

•  9  How.,' 838,  all  tho  controverted  facts  on  which  both 
‘  sides  relied  lmd  transpired  and  wore  concluded  before 
‘  the  act  of  July  4, 1836,  was  passed;  and  therefore  its 
‘  construction,  as  regards  the  Commissioner’s  powers 

•  under  the  act  of  1886,  was  not  involved;  whereas,  in 
‘  the  case  tinder  consideration,  the  additional  proeoed- 
‘  ings  were  had  before  the  Register  and  Receiver  in  1887, 

‘  ami  were  subject  to  the  new  powers  conferred  on  tho 
‘  Commissioner.” 

Tho  act  of  1836,  above  construed  by  the  Supreme 
Court,  is  very  similar  to  the' one  now' under  considera- 
;ion.  It  gives  to  the  Commissioner  “supervision  and  con¬ 
sol.”  This  gives  to  the  Secretary  “supervision  and  direc¬ 
tion.”  Tho  terms  are  synonomous.  The  former  con¬ 
tains  tho  words  “  executive  duties.”  Under  this  phrase¬ 
ology  it  might  bo  claimed,  with  considerable  plausibility, 
that  tho  “  executive  duties”  referred  to  were  ministerial 
only,  and  did  not  include  tlioso  that  were  judicial  in 
their  character;  whereas  tho  latter,  in  clear  nnd  express 
terms,  relates  to  “ all  duties  respecting  tho  granting  and 
issuing  of  patents.” 

Wo  rely  upon  this  case  ns  high  authority  for  tho  con¬ 
struction  which  wo  maintain. 

The  learned  counsol  for  Prescott  objects  to  this  con¬ 
struction,  bccuuso,  ho  says,  that  under  it,  tho  Secretary 
could  disregard  tho  decision  of  tho  Supremo  Court  of 


tho  District  in  n  ease  appealed  to  it  (when  the  patent  ^ 
hurt  been  refused  by  tlio  Commissioner),  or  tbo  rtceision 
of  tbo  Circuit  Court  upon  bill  in  equity  tiled  under  sec¬ 
tion  4915  of  tho  Revised  Statutes.  We  do  not  agree 
with  this  view. 

It  is  evident  that  Congress  intended  that  tho  remedies 
referred  to  should  tie  special,  and  tho  decisions  of  said 
courts  tinnl  and  conclusive  upon  nil  the  parties  in  inter¬ 
est,  and  upon  all  the  otlicers  who  are  required  to  issue 
tho  patont.  In  tbo  ease  of  tho  appeal  to  the  Supremo 
Court  of  tho  District  it  is  expressly  provided  that  the 
decision  of  the  court  “  shall  govern  the  further  proceed¬ 
ings  in  tho  case.”  Of  course  that  would  require  tho 
Secretary  to  unite  in  the  execution  of  the  letters  patent. 

In  the  onso  of  the  bill  in  equity  it  is  provided  that 
“  such  adjudication,  if  it  bo  in  favor  of  the  applicant 
shall  authorize  the  Commissioner  to  issue  such  patent  on 
the  applicant  tiling  a  copy  of  the  adjudication.”  It  is  ap¬ 
parent  that  tho  word  “  authorize  ”  is  UBod  in  n  manda¬ 
tory  sense. 

If  the  Secretary  has  tho  power  of  “  supervisi 
“direction  ”  in  all  matters  relating  to  the  granting  and 
issuing  of  patents,  ns  we  have  attempted  to  show,  then 
he  lias  the  power  to  exercise  that  “supervision  ”  and 

“direction”  as  ho,  in  his  discretion,  may  see  fit. 

Ho  is  not  required  to  wait  for  a  final  dccisiou  of  any 
matter  before  the  Commissioner. 

PcrhnpB  it  would  bo  wiso  in  him  to  adopt  that  rule, 
but  lie  is  not  bound  to  do  it.  Ho  may  exercise  the  power 
in  relation  to  preliminary  orders.  In  tho  case  at  bar  bo 
did  not  do  it  until  the  Commissioner  had  decided  to  whom 
tho  patent  should  issue.  . 

That  decision  was  not  made  until  ,  it  had  boon  deter¬ 
mined  in  his  ofllco  that  thoro  wore  no  interferences. 


There  could  bo  none  thereafter  unloss  sc 
it  should  file  an  application  claiming  the  ss 
tion  that  Edison  claimed,  and  tho  eluinocs  of  that  hap- 
'  poniug,  were  not  one  in  ten  thousand. 

Practically,  therefore,  tho  decision  of  tho  Commis¬ 
sioner  was  final.  There  is  nothing  in  the  record  to  indi¬ 
cate  the  contrary,  and  we  suppose  that  the  Secretary  will 
not  go  outside  of  the  record  to  discover  orders  made  by 
the  Commissioner. 

The  conclusion  which  wo  have  reached  is  that  the  Sec¬ 
retary  has  the  legal  right  and  power  to  “  hear  and  deter¬ 
mine  ”  for  himself  whether  he  will  oxoento  the  patont  to 
Edison  and  Prescott. 

Wo  do  not  say  that  ho  should  reverse  the  action  of 
the  Commissioner  and  direct  him  how  he  should  issi 
the  patent.  It  is  not  necessary  that  that  question  should 
be  determined  in  this  case.  But  we  do  say  that  ho 
cun  legally  refuse  to  unite  with  tho  Commissioner,  and 
that  brings  us  to  the  second  inquiry  whether  the  letters 
pntent  should  be  issued  to  Edison  and  Prescott. 

The  assignment  to  Harrington  was  prior  to  that  to 
Prescott.  It  clearly  included  tho  improvements  in  quos- 

Prcscott  had  notice  of  it  when  ho  took  his  assignment. 
If  tho  inventions  wore  in  esse,  at  the  time  of  the  assign- 
o  Harrington,  it  is  clonr  that  they  passed  to  him. 
There  is  nothing  in  tho  record  to  show  that  they  wore 
not  then  in  existence.  But  lot  us  assume  that  they  wore 
not,  nnd  we  yet  maintain  that  thoy  wore  transferred  to 
Harrington  nnd  that  he  has  tho  prior  nnd  better  right. 
In  support  of  this,  wo  dosire  to  call  tho  attention  of  tho 
Hon.  Secretary'  to  tho  case  of  Trimble  v.  The  Railroad 
Company,  10  Wall.  807,  which  is  analogous  to  tho  one 
undor  consideration,  nnd  is  founded  upon  the  following 


8 

Oil  the  10  th  of  July,  1840,  one  ITowo  line!  obtained  a 
patent  for  constructing  the  truss  frame  of  bridges.  On 
the  8d  of  August,  1840,  ho  obtained  n  patent  for  an  im¬ 
provement  on  the  same. 

On  tlio  0th  of  July,  1844,  ho  assigned  to  Isaac  R. 
Trimble,  all  bis  rights  in  the  above  patent  for  certain 
States,  including  Maryland.  This  assignment  was  duly 
recorded,  and  conveyed  Howe’s  right  in  tlioso  words: 
“All  tho  right,  title  and  interest  which  I  have  insuitl in¬ 
vention  as  secured  to  mo  by  said  letters  patent ;  and  also  all 
right,  title  and  interest  which  mag  be  secured  to  me  for 
alterations  and  improvements  in  the  same  from  time  to  time, 
******  the  same  to  bo  held  and  enjoyed  by  tho 
said  I.  It.  Trimble,  &c.,  to  tho  full  end  of  tho  term  for 
which  said  letters  patent  are  or  mag  be  granted,  as  fully 
and  entirely  as  the  same  would  have  been  held  and  en¬ 
joyed  by  mo  had  this  assignment  mid  sale  not  have  been 
made.” 

Howo  afterwards,  and  on  the  28th  of  August,  1840, 
obtained  nnothcr  patent  for  an  improvement  in  tho  man¬ 
ner  of  constructing  these  truss  frames,  which  Inst  named 
patent  was  extended  for  seven  yoars  from  tho  28th  of 
August,  1800. 

Tho  defendant,  tho  Philadelphia,  Wilmington  and  Bal¬ 
timore  Railroad  Company,  during  the  yenrs  1804,  18G5 
and  1800,  that  is,  during  the  term  of  the  extension  of 
the  patent,  made  use  of  tho  improvement  of  Howe,  in 
constructing  certain  bridges  in  Maryland.  Trimble 
brought  suit  to  recover  damages  for  the  unauthorized 
use  of  this  improvement.  The  validity  of  the  patent, 
was  not  questioned.  Tho  point  mndu  by  the  defendant 
was  that  tho  assignment  of  J  uly  9th  1844,  did  not  pass 
title  to  tho  extension  of  tho  patent  of  1846. 

Prom  tho  abovo  statement  it  will  bo  seen  that  the  ac¬ 
tion  was  for  an  infringement  of  tho  improvement  of 


1846;  that  this  improvement  was  not  in  existence  at  tho 
date  of  tho  assignment  by  Howo  to  Trimblo  of  July  9tli, 
1844,  and  that  Trimble  had  no  legal  right  to  tho  im¬ 
provement  or.  its  extension,  unless  it  was  given  to  him 
by’  tho  assignment  of  1844. 

Tho  purchase  and  .  assignment  of  a  patent  gives  no 
right  to  the  assigneo  to  use  and  enjoy  an  improvement 

subsequently  mndo  upon,  that  patent.  He  must  also 

purchase  tho  right  to  use  tho  improvement.  Ho  authori¬ 
ties  are  necessary  upon  so  plnin  a  proposition:  There¬ 
fore  in  the  caso  under  consideration  it  was  necessary,  in 
ordor  that  Trimblo  should  be  able  to  maintain  his  notion, 
to  hold  that  ho  had  acquired,  by  tho  terms  of  his  n^roe- 
mont  with  Hpwo,  a  legal  right  to  all  subsajuent  improve- 
meats  upon  his  original  ..patents,,  and  not  only  that,  but 
also  n  right  for  all  terms  for  which  the  original  or  im¬ 
provements  should  bo  extended,  nnd  so  tho  Court  did 
hold. 

Swnyne,  Judge,  in  delivering  the  opinion  of  tho  Court, 
said:  “The  deed  from  Howe  recites  that  ho  had  obtain- 
:  “cd  from  the  United  States  two  patents  for  now  nnd 
“useful  improvements  in  tho  construction  of  truss 
“bridges  and  othor  structures,  ono  dntod.on  tho  10th  of 
“July,  the  other  on  the  8d  of  August,  in  tho  year  1840. 

“  Tlie  instrument  is  a  deed  poll.  After  setting  out  the 
“consideration,  it  proceeds  us  follows:  ‘I  have  nssigned, 
“sold  nnd  set  over,  all  tho  right  title  nnd,  interest  which 
“1  have  in  said  invention,  ns  secured  to  me  by  said  letters 
“  paten  t,  and  also  all  right,  title  and  interest  which  maybe 
“  secured  to  mo  for  alterations  and  improvements  on  tho 
“  snmo  from  time  to  time,  for,  to,  and  in  tho  following 
“  States,  viz,  Ac.,  *  *  *  *  tho  snmo  to  be  held  nnd 
“  enjoyed,  by  tho  said  I.  R.  Trimble  for  his.own  use  and 
“  behoof,  nnd  for  the  use  and  behoof  of  his  legal  ropro- 
“  sentatives  to  the  full  end  of  tho  term  for  which  said 


n 

time,  *  *  *  to  bo  hold  and  enjoyed  *  *  *  to 
tbo  full  end  of  the  term  for  which  said  letters  patent  are  . 
or  may  bo  granted.” 

In  the  latter  it  is:  “Whereas  I,  *  *  *  ,  did Btipu- 
lato  and  agree  to  invent  and  construct  for  the  said  Har¬ 
rington  full  aud  comploto  sots  of  instruments  and  ma¬ 
chinery  that  should  successfully  nnd  economically  de¬ 
velop  into  practical  use  the  Little  or  other  system  of  au¬ 
tomatic  or  fust  system  of  telegraphy,  and  subsequently 
to  improve  nnd  perfect  such  instruments  and  machinery, 
by  adding  thereto,  from  time  to  time,  such  further  in¬ 
ventions  ns  experience  should  demand  nnd  my  ability  ns 
an  inventor  nnd  electrician  might  suggest  nnd  permit. 

*  *  *  How,  therefore,  *  *  *  I  *  *  »  ]>0rcby 
assign,  set  over,  nnd  convey  to  him,  tho  said  Harrington, 
two-thirds  interest  of  nil  my  said  inventions,  including 
therein  all  my  inventions  of  mechanical  or  copying 
printers,  nnd  of  all  the  patents  for  nil  such  inventions 
and  printers,  whether  already  issued,  applied  for,  or  to 
bo  hereafter  applied  for,  and  of  nil  and  whatsoever  of 
my  inventions  and  improvements,  mndo  or  to  be  mnde, 
of  all  the  patents  that  may  be  issued  therefor  that  are  or 
mny  be  applicable  to  automatic  tolcgrnph  mechanical 
printers.” 

We  think  that  the  construction  adopted  by  the  Supremo 
Court  is  conclusive  of  this  case,  nnd  .following  and  ap¬ 
plying  it  to  tho  present  case,  claim  that  tho  assign¬ 
ment  to  Harrington  covcrod  tho  inventions  in  contro¬ 
versy,  und  that,  his  rights  aro  superior  to  tlioso  of  Pres¬ 
cott.  ■ 

There  is  another  point  to  which  wo  desire  to  call  the 
attention  of  the  Secretary.  It  is  well  settled  that  an  as¬ 
signee  is  not  entitled  to  a  patent  unless  bo  has  an  assign¬ 
ment  of  tho  entire  interest  in  tho  invention. 

"  It  is  conceded  that  Prescott  hns  no  such  assignment; 


« letters  patent  are  or  may  be  granted,  as  fully  nnd  entirely 
“  ns  tho  samo  would  have  been  hold  nnd  enjoyed  by  me 
«  had  this  assignment  and  sale  not  have  been  made.’  A 
“  careful  analysis  of  these  provisions  eliminates  tho  fol- 
«  lowing  results :  Howe  assigns  to  Trimble  all  his  title 
“and  interest  in, tho  inventions  seenred  to  him  by  tho 
“  two  patents  mentioned,  in  respect  to  the  territory 
“specified,  nnd  also  all  tho  right  and  title  which  should 
“  bo  secured  to  him  for  alterations  nnd  improvements  in 
“  the  inventions,  from  time  to  time  thereafter,  for  tho 
“  same  territory,  to  be  hold  nnd  enjoyed  by  Trimblo  to 
“  the  fall  end  of  the  terms  for  which  patents  had  been 
“  theretofore,  or  might  bo  thereafter  granted,  in  all  rc- 
“  spects  as  they  would  have  been  held  and  enjoyed  by 
“  tlie  assignor  if  the  assignment  had  not  been  made.” 

“  The  language  employed  is  very  broad.  It  includes 
“aliko  the  patents  which  hail  been  issued,  nnd  all  which 
“might  be  issued  thereafter.  Ho  discrimination  is  mnde 
“  between  those  for  tho  original  inventions,  and  those 
“  for  alterations  and  improvements,  nor  botween  those 
“  which  were  first  issues  nnd  those  which  were  reissues 
“  or  renewals,  nnd  extensions.  The  entire  inventions 
“  and  all  alterations  and  improvements,  ami  ull  patents 
“  relating  thereto,  whensoever  issued,  to  the  extent  of  the 
“  territory  specified,  aro  within  the  scope  of  tho  terms 
“  employed ;  no  other  construction  will  satisfy  them. 
“  Upon  the  fullest  consideration,  we  Iiavo  no  doubt  such 
“  was  tlie  meaning  and  intent  of  tho  parties.” 

Tho  language  employed  in  tho  assignment  in  tlie 
above  case  and  tlie  one  now  under  consideration  is 
identical  in  signification. 

In  tho  former  it  is:  “  All  my  right,  title,  nnd  interest 
which  I  have  in  snid  inventions,  *  *  *  and  alsp.aH 
right,  title,  nnd  interest  which  may  bo  secured  to  me  for 
alterations  aud  improvements  iu  tlie  same  from  tiino  to 


but  it  is  claimed  that  Edison  assigned  to  himself  mul 
Prescott.  ■  Snell  an  assignment  is  a  fraud  upon  tlio  low. . 
A  man  cannot  assign  to  himself.  '  Any  practice  that 
recognizes  such  an  assignment  is  pernicious  and  should 
ho  abolished.  Malus  usus  abolcndus  cat. 

The  patent  should  be  issued  to  Edison  nlono. 

The  respective  claimants  will  thereby  bo  compelled  to 
contest  and  establish  their  rights  in  the  courts,  whore  it 
is  evident  the  case  will  eventually  go,  no  matter  to  whom 
the  patent  is  issued. 

Respectfully  submitted, 

SMITH  &  REDINGTON, 

Of  Counsel. 


STATEMENT 

Of  George  Harrington  of  his  relation  with 
Thomas  A.  Edison,  and  his  improvements 
in  Fast  Telegraphy. 

Represents:— That  prompted  by  the  public  agitation  in 
the  United  States  for  cheap  telegraphy,  and  the  action  in 
Congress  m  connection  therewith,  Mr.  Harrington  during 
nil  .official  residence  in  Switzerland  for  several  years  ex¬ 
amined  the  conditions  of  European  Telegraphy,  and  its 
management  under  government  control 
„  return  to  the  United  States,  in  the  latter 

part  ot  18  ,.l,  he  continued  Ins  investigations  of  telegraph 
nffuirs,  with  a  view  of  ascertaining  whether  it  were  possible 
to  meet  the  demand  for  cheap  telegraphy,  and  to  test  the 
.lech,,,,. ions  ot  the  oflieers  of  the  Western  Union  Company, 
nnd  ot  telegraphers  generally,  that  any  further  material 
reductions  in  the  tariff  ot  charges,  would  entail  large  or 
serious  atiiiiin!  losses  upon  those  operating  the  telegraph  • 
ami,  if  such  declarations  were  founded  upon  fact,  whether 
there  were  any  means  for  cheapening  the  cost  of  telegraphy, 
so  as  to  comply  with  a  demand  that  was  becoming  universal 
throughout  the  country. 

THE  INVESTIGATION  DISCLOSED. 

First.  That  all  the  railways,  and  the  principal  highways 
and  oven  many  by-ways  of  the  country  were  lined  with  tele¬ 
graph  poles,  upon  which  wore  placed  from  ono  to  fifty 


Second. — That  these  telegraph  lines  ami  equipment, 
represented  a  stock  ami  bond  capital  of  about  sixty  millions 
of  dollars. 

Third. — That  with  every  material  increase  of  business, 
there  bad  been,  and  must  continue  to  bo,  a  corresponding 
demand  for  nioro  capital,  for  additional  lines  ami  Wires, 
carrying  with  it  a  corresponding  increase  of  expenses. 

Fourth. — That  notwithstanding  the  immense  number  of 
lines  and  wires,  they  wero  unequal  at  times  for  the  business 
offering. 

Fifth. — That  the  business  of  the  Western  Union  Com¬ 
pany,  in  18GG-7,  was  5,800,000  messages;  and  in  1873-4, 
was  14,500,000  messages,  thus  proving  their  business  to 
liuvo  nearly  doubled  every  five  years.  If  we  add  tlio 
business  of  the  competing  companies,  all  of  which  have 
sprung  into  existence  since  18GG,  the  year  when  the  Morse 
patents  beenme  public  property,  the  telegraph  business  has 
doubled  every  five  years. 

Sixth. — That,  there  were  several  competing  companies, 
sectional  in  their  character,  while  the  lines  of  the  Western 
Union  Company  extended  to  all  parts.of  the  country,  over 
which  wns  done  about  90  per  cent,  of  tlio  whole  busi- 

Seventh. — ll.nt  these  competing  companies  hud  lurgely 
reduced  tlio  price  for  telegraphing,  and  forced  upon  the 
Western  Union  Company,  similar  reductions. 

Eighth. — That  neither  the  Western  Union  Company,  nor 
the  competing  companies,  for  many  years  bonefitted  their 
stockholders  by  the  payment  of  dividends ;  and  the  Presi¬ 
dent  of  the  Western  Union.  Company,  declared  to  the  com¬ 
mittee  of  Congress,  that  most  of  such  companies  were  ope¬ 
rating  at  an  annual  cash  loss. 

Ninth. — That  the  necessity,  ns  shown  by  tlio  policy  of  the 
Western  Union  Company,  of  removing  competitions  by 
buying  up  competing  liuus,  indicated  inherent  weakness  in 
that  institution. 

T'hus  far  Mi;.  Harrington’s  investigations  led  to  the  con¬ 
clusion,  that  cheaper  telegraphy  was.  not  within  the  reach 
ol  the  people. 


Tlio  next  subject  that  engaged  his  attention,  wns  the 
methods  of  telegraphing,  and  the  character,  capncity  and 
cost  of  operating  the  telegraph  system  in  practical  uso. 

With  the  single  exception  or  a  printing  system  in  limited 
use  by  the  Western  Union  Company,  and  that,  as  wns 
understood  mainly  m  compliance  with  an  unexpired  con¬ 
tract,  the  Morse  system  was  the  only  practical  system  in 
the  United  States. 

This  system,  until  18GG  monopolized  by  patents,  wns 
amply  sufficient  for  the  needs  of  the  tolegraph  up  to  that 
dutc,  the  volume  of  business  being  restricted  to  the  wants 
of  a  comparatively  limited  class,  by  reason  of  the  high 
charges  cxuctcd. 


_  With  the  advent  of  competition,  anil  a  concurrent  reduc¬ 
tion  in  tariffs,  the  telegraph  business  rapidly  increased, 
causing  us  rapid  an  increase  in  lines,  wires  and  offices,  the 
only  equipment  of  which  wns  Morsu  instruments. 


The  Western  Union  Company  were  opposed  to  any,  and 
all  new  systems  or  improvements  in  tlio  method  of  tele¬ 
graphing,  tliut  would  involve  a  new  equipment  of  their 
lines,  they  alleging  the  great  outlay  that  would  bo  conse¬ 
quent  thereon,  as  the  cause  of  their  opposition. 

With  the  Morse  system  there  is  an  average  for  all  the 
AVestern  Union  wires,  of  not  more  tlinn  ten  words  per 
minute.  On  the  lines  between  principal  cities,  from  fifteen 


to  twenty  words  per  minute.  (We  speak  of  daily  averages.) 
These  number  of  words  do  not  employ  oue-thirlicth  the 


capacity  oi  any  wire,  notwithstanding  which,  if  the  current 
business  exceeds  materially  twonty  words  per  minute,  another 
wiro  with  equipment,  and  its  corps  of  operators  must  be 
provided ;  and  every  now  wiro  entails  a  costly  annual  main¬ 
tenance,  which  for  the  year  1873-1,  wns  officially  reported 
by  the  Western  Union  Company,  to  have  averaged  $8.G6 
per  mile  of  wiro,  aggregating  about  $1,500,000  per  annum, 
thus  showing  maintenance  to  bo  one  of  the  important  ele¬ 
ments  in  the  cost  of  operating  the  telegraph. 

Mr.  Harrington  soon  satisfied  himself  that  under  existing 
conditions,  the  limits  of  capital  investment  in  telegraph  en¬ 
terprises  had  been  nearly  roaohed,  and  that  money  for  more 


lings  anil  wires  could  only  lie  obtained,  by  existing  or  new 
companies  nt  great  sacrifices. 

Under  tbeso  circumstances,  there  was  but  ono  of  two 
courses  to  bo  pursued.  Either  to  crush  out  competition,  nnd 
as  a  monopoly  increase  the  tariffs,  so  ns  to  check  the  expan¬ 
sion  of  the  business,  or  to  obtain  some  faster  system  than  the 
Morse  system,  so  as  to  utilize  the  unused  capacity  of  existing 
wires,  and  thus  remnvo  the  necessity  for  additions  thereto, 
anil  with  it  the  demand  for  additional  ciipitnl. 

Tho  Western  Union  Company  pursued  the  policy  first 
indicated. 

Mr.  Orton  is  justified  in  his  assertions.  The  Morse  sys¬ 
tem  is  too  slow  for  tho  present  day.  Its  limited  capacity 
demands  too  much  capital  to  sustain  it,  and  the  immense 
number  of  wires  it  requires  nnd  will  require  for  tho  present, 
and  prospective  business  of  tho  country,  involves  such  an 
annual  aggregate  outlay  for  their  maintenance  as  not  only 
to  render  cheap  telegraphy  an  impossibility,  but  that  even  n 
Blight  reduction  in  the  tariffs  of  charges' would  operate  a 
constant  and  annual  loss,  and  practically  destroy  the  market 
value  of  the  property. 

Mr.  Harrington  determined,  if  in  his  power,  to  so  improve 
the  methods  of  telegraphy  by  such  new  devices,  or  new  and 
faster  systems  as  should  supersede  all  present  necessity  for 
moro  capital,  and  not  only  arrest  the  constantly  increasing 
cost  of  operating  nnd  maintenance  inherent  to  the  Morse 
system,  but  il  possible,  so  to  reduce  current  expenses  ns 
compared  with  the  amount  of  business  transacted,  as  should 
place  cheap  telegraphy  within  reach  of  the  people,  and  at 
the  Bnme  time  yield  satisfactory  returns  for  the  capital  in¬ 
vested. 

Not  being  himself  an  inventor,  this  undertaking  rendered 
it.  necessary  for  him  to  seek  tho  highest  inventive  capacity 
equal  to  tho  ends  to  bo  uttuiuod. 

Mr.  George  Little,  a  well  known  electrician,  claimed  to 
have  made  great  improvements  in .  telegraphy,  and  to  have 
nvonted  a  lust  system,  and  Mr.  Harrington  secured  his 


inventions  and  his  exclusive  services  in  continuing  nnd  per 
fccting  them. 

Mr.  Thomas  A.  Edison,  of  Newark,  hnd  also  mado  valua 
hlo  improvements,  and  was  otherwise  represented  ns  at 
inventor  of  largo  inventive  resources,  and  especially  convor 
snnt  with  electricity  and  its  application  to  telegraphy,  bu 
without  the  means  to  meet  the  expenditures  for  experiment! 
and  tests  that  new  inventions  demand.  Harrington  wm 
willing  to  combine  his  cash  capital  with  Edison’s  inventivi 
brains,  and  Edison  consented.  They  entered  into  a  co-part 
nership  on  the  1st  of  October,  1870,  for  a  period  of  fivi 
years,  under  the  name  and  stylo  of  "The  American  Tele 
graph  Works,"  with  its  factory  at  Newark. 

By  his  contract  with  Mr.  Harrington,  Mr.  Littl'o  was  ti 
devote  bis  whole  time  to  tho  development  of  his  fust  system, 
which  he  denominated  an  "Automatic  System,”  and  which 
he  guaranteed  should  be  a  practical  success,  nnd  there  wai 
no  renson  to  doubt  his  ability  to  fulfil  his  pledgo. 

Mr.  Edison  hnd  invented  a  fast  system  which  he  styled  c 
Duplex  system,  and  hnd  illustrated  his  invention  in  tlit 
columns  of  the  “ Telegrapher.” 

Mr.  Little  was  relied  upon  nnd  engaged  to  perfect  the 
Automatic  system  to  which  his  mind  hud  been  devoted  for 
several  years.  But  it  was  not  yet  perfected,  nnd  Harrington 
declined  to  rely  upon  improvements  solely  or  even  mainly  in 
that  one  direction. 

Edisoii’s.Duplex  invention  indicnteil  a  current  of  thought 
in  an  .altogether  different  channel,  nnd  he  pledged  himself  to 
a  fust  system  without  specially  indicating  what  the  features 
were  to  bo.  Mr.  Harrington  well  knowing  nnd  fearing  the 
hesitation  from  motives  of  delicacy  of  one  inventor  interfer¬ 
ing  with,  or  thrusting  himself  into  tho  inventions  of  another 
so  framed  his  contract  of  October  1st,  1870,  ns  to  cover  all 
of  Edison’s  inventions  with  the  exceptions  specifically  set 
forth,  and  so  worded  his  assignment  and  power  of  attorney 
as  to  causo  Edison’s  general  nssistanco,  not  only  to  invent 
and  improve  an  original  fast  system  of  his  own,  but  if 
necessnry,  and  within  his  power,  anil  desired  by  Harrington 
to  assist  in  the  developments  and  improvement  of  tho  Little 


Automatic  system  already  under  the  control  of  Harrington, 
ns  also  of  any  other  fast  system,  Automatic,  or  otherwise, 
not  tile  invention  of  Edison  of  which  Harrington  should  get 
possession; 


Articles  of  co-partnership  were  accordingly  entered  into 
between  Harrington  uud  Edison,  which  provided  : 

Suction-  1.  That  said  parties  will  he  partners  as  Inventors 
and  manufacturers  of  ‘‘all  and  whatsoever  may  be  required 
by  the  various  systems  of  telegraphy,  *  *  the  said  parties 
to  be  interested  ns  owners  in  ull  original  inventions  and  im¬ 
provements  invented,  purchased,  or  obtained  by  them,  or 
either  of ‘them  in  the  proportions  ns  hereinafter  set  forth.” 

Sec.  4.  ‘‘The  party  of  the  first  part  (Edison,)  shall  furnish 
the  sum  of  $3,000  in  the  manner  set  forth,  and  the  party  of 
the  second  part  shall  furnish  tho  sum  of  six  thousand  dollurs 

Sec.  6.  “  The  party  of  the  first  part  shall  give  his  whole 
time  and  attention,  talents  and  inventive  powers  to  the  in¬ 
terests  and  business  of  the  firm,  and  shall  admit  no  other 
parties  to  any  direct  or  indirect  interests  in,  or  to  any  inven¬ 
tions  or  improvements  made  or  to  be  made  by  him  except 
such  as  hereinafter  set  forth,  but  all  such  shall  enure  and 
belong  to  tho  parties  of  the  first  and  second  part  ns  above 
sot  forth,  in  the  proportions  sot  forth  in  section  sixth  of  this 
indenture.”  (The  exceptions  referred  to,  were  gold  and 
stock  reporting  inventions.) 

Sec.  G.  Sets  forth  the  proportionate  interests  as  one-third 
to  Edison,  and  two-thirds  to  Harrington. 

Seo.  8.  Sets  forth  that,  “  in  all  that  relates  to  the  finan¬ 
cial  affuirs  of  the  firm,  and  business  and  the  disposition  of 
the  products  of  the  fuctory  *  *  shall  bo  performed  or  up- 
proved,  controlled  uml  directed  at  his  option  by  tho  party 
of  the  second  part,"  (Harrington.) 

The  active  operations  of  tho  firm  wore  forthwith  com¬ 
menced,  and  thereafter  pushed  witli  great  vigor— a  factory 
having  been  fitted  and  furnished  with,  costly  machinery^ 


prior  to  the  end  of  October  or  within  thirty  days  from  the 
date  of  co-partnership,  tho  main  object  of  which  wns  to 
.experiment,  make,  test  and  perfect  new  inventions' and  im¬ 
provements  of  various  kinds  in  connections  with  “  the  various 
system  of  telegraphy.” 

During  the  six  months  succeeding  the  date  of  co¬ 
partnership,  Harrington  advanced  more  than  thirty  thou¬ 
sand  dollars  in  cash,  which  onnbled  Edison  to  mnko  and 
perfect  various  telegraph  inventions  nnd  improvements  ;■  and 
many  more  and  much  larger  expenditures  worn  in  contem¬ 
plation. 

In  order  to-  secure  tho  capital  thus-  invested',  and' 
expended  together  with  the  continued1,  and'  grenter  advances' 
thereafter  to  be  made,  and  tho  rights  of  Harrington  in  con¬ 
nection  therewith,  the-  said  Edison  in  good  lhith  and  in 
pursuance  of  his  agreement  ns  set  forth  in  tho  articles  of  co¬ 
partnership,  duly  executed  an  instrument  in  writing,  which- 
referred  to,  and  set  forth  and  recited  certain  provisions  of 
suid  contract  or  articles  of  co-partnership,  nnd '  thereupon 
reciting  that  the  said-  Harrington  lmd  faithfully  complied 
with  all  his  stipulations  and  promises,' did  then  and- therein- 
assign  and  set  over-  to  said  Harrington  two-thirds  interest 
anil  ownership  of  nil  his  (Edison’s,)  inventions,  made  nnd  to 
be  lntide,  and  declared  that  tho  patents  should  issue  to 
“said  Harrington  and  myself  (‘Edison,’)  in  the  propor¬ 
tionate  interests  of  two-tliirds  to  said  Harrington  and-  one-- 
third  to  myself  (‘Edison,’)  tho  whole  to  bo  under  tho  sole 
control  of  said  Harrington.”  And  he  furthermore  then  nnd 
therein  constituted  and  appointed  tho  said  Hiirrington  his- 
only  attorney'  irrevocable;  with  power  to-  subsitutc,  to  sell, 
assign,  transfer  and:  convoy  his— Edison’s— said'  one-third1 
interest  in  conjunction  with  Hnrrington’s-two-thirds  in  such- 
manner,  and  to  such  cxtent.ns  ho,  Hurrington,  might  think- 
proper-for  their  mutual  benefit,. 

In  tho  current  opcrntionB-ofthe  co-pnrtnership  nnd:  the- 
continuity-  of’ inventions,  that  is  to-  say,  early  in  1874 
Edison  iuvented  a  fast  system  of  telegraphy,  by  menus  of 
which-  four  times  tho  business-  can-  bo  done-over-  ono  wiro, 
than  can  be  done  by  the  Morse  system.  .  -■  .  . . 


Stearns,  looking  to  the  same  end  ns  Harrington,  via: 
greater  utilization  of  wires,  invented  a  fast  system  by  which 
tlie  work  of  two  wires  could  bo  done  upon  one,  thereby 
effecting  as  claimed  an  economy  of  fifty  por  cent.  This 
he  denominated  the  “Duplex  System." 

Wlieatstouo  of  England  invented  a  fast  system  which  is 
equal  to  from  four  to  six  Morse  wires  for  short  distances. 
This  is  operated  by  machinery  ns  is  Little’s,  and  is  known 
ns  Wheatstone's  or  the  English  fast  system. 

Edison's  invention  by  permitting  four  times  the  amount 
.  of  business  to  bo  transacted  on  one  wire  on  long  nnd  short 
distances,  than  can  bo  done  by  the  Morse  system,  effects  a 
saving  in  wires  of  seventy  fivo  per  cent,  and,  will  permit 
the  volume  of  business  to  increase  four  fold  before  there 
will  be  an  occasion  for  more  capital,  if  existing  wires  are 
used  or  if  new  linos  nnd  wires  are  erected,  but  about  one- 
fourth  the  capital  will  suffice.  This  fast  system  lie  dis¬ 
tinguished  by  the  name  of  “  The  Quadruplcx  System.” 

We  hold  therefore  that  these  Duplex  nnd  Qundruplex  in¬ 
ventions  are  included  directly  within  the  terms  of  the  nssign- 
ment  and  power  of  attorney  to  Harrington  from  Edison, 
even  though  it  ho  interpreted  alone  nnd  without  reference  to 
the  contract  before  alluded  to.  This  assignment  of  1871, 
refers  principally,  to  quote  from  it,  to  “  the  Little  or  other 
system  of  automatic,  or  fast  system  of  telegraphy.” 

A  review  of  the  circumstances  under  which  it  was  made, 
and  the  objects  in  view  in  making  it,  will  aid  in.fairly  con¬ 
struing  it;  nnd  these  arc  matters  allowed  to  be  introduced 
m  construing  such  documents.  When  it  was  made,  Mr. 
Harrington  wns  endeavoring  to  .find  the  road  to  cheap  nnd 
economical  telegraphy.  Hot, only  did  lie  incur,  heavy  pecu¬ 
niary  obligations  in  obtaining  nnd  perfecting  inventions,  but 
in  addition  to  . the  establishment  of  a ,  complete  factory,  he 
obtained  control  of  an  independent  telegraph  lino,  of  one 
wire  extending  from  Now  York  to  Washington,  on,  and 
arcade  hBC°Uld  ***  inventions 


iv  of  the  great  facilities  possessed  liy  the  Western 
|  Mnion  Telegraph  Company  nnd  its  practical  monopoly  of 
telegraph  business,  there  wns  but  one  way  possible  to  secure 
the  capital  fora  rival  company,  and  obtain  n  share  of  the 
business ;  this  was  by  adopting  or  devising  such  arrange¬ 
ments  ns  would  enable  a  rival  to  offer  to  do  the  work  at  lower 
rates ;  to  offer  “  the  most  telegrnphing  for  the  least  money." 
But  no  such  advantage  could  bo  offered  if  the  ordinary 
Morse  system  was  adhered  to  nnd  used.  The  capacity  of 
i  any  single  wire  used  with  such  system  wns  well  known,  had 
;  been  accurately  determi ned  and  the  rates  based  on  such  data. 
In  nn  editorial,  the  “Journal  of  the  Telegraph”  of  January 
15th,  1875,  (this  Journal  is  published  by  and  is  the  official 
organ  of  the  Western  Union,  nnd  under  the  charge  of  Mr. 
Prescott,  the  Electrician  of  the  Western  Union  Company,) 
snys,  “the  old  system,  ( i .  e.  ordinary  Morse,)  of  telegraphy, 
allowed  a  single  Morse  wire  in  n  lively  circuit  to  average  per 
i  hour  about  forty  messages  of  twenty  words  ench.”  Hence 
|  if  rates  were  to  be  reduced,  a  necessity  on  the  part  of  Mr. 

|  Harrington,  it  could  only  bo  done  by  increasing  the  capncity 
;  of  the  “single  Morse  wire,"  so  that  many  times  the  “forty 
i  messages"  above  referred  to,  could  be  sent  thereon  in  ono 
hour. 

To  accomplish  this  wns  the  object  of  the  Harrington  and 
Edison  contract.  Any  such  increase  of  capncity  was  called 
“  fastness,"  and  any  system  so  increasing  the  capncity  was 
called  “fast."  This  term  “fast”  had  application  to  capacity 
only,  to  the  number  of  messages  transmitted  over  a  given 
wire  in  a  given  time,  taking  the  old  system  as  the  standard ; 
for  by  no  means  could  tho  speed  of  the  electrical  impulses  be 
increased,  but  more  of  them  could  bo  sent  ovor  the  wire  in  a 
given  time. 

i  ■  When  this  assignment  wns  mado,  Harrington  controlled 
Little’s  so  called  “Automatic  system,"  ono  of  the  “ fast 
systems."  This  system  Mr.  Harrington  was  experimenting 
with  under  tho  immediate  direction  of  Mr.  Little.  But 
there  wero  other  systems  by  which  tho  snmo  result  (increase 
of  capacity)  could  bo,  in  a  measure,  obtained. 


10 


Mr.  Ellison  had' already  investigated  tlie  Duplex — hail  in 
18G8  invented  a  now  form  thereof,  which  he  published  with 
diagrams  in  tho  “The  Telegrapher”  of  that  year.  So  thoro 
i  was  milled  thoreto,  as  covering  these  other  systonispind 
\  having  in  view  the  result  aimed  at,  tho  words  “or  fast  sys- 
'tems  of  telegraphy.” 

That  “fast  systems"  includes  all  systems,  plans  or 
methods  for  increasing  tho  capacity  of  the  wire,  lius  never 
boon  soriously  denied,  unless  personal  interests  demanded  it. 
In  fnct,  when  such  interests  have  been  lost  sight  of,  this 
definition  of  “fast"  has  been  given  by  nil  electricians  and 
telegraphers :  even  by  Mr.  Prescott,  who  in  this  case  con¬ 
tests  it,  anil  by  Mr.  Pope.  These  two  gentlemen  control  tho 
Electricnl  and  Telegraph  Journuls  of  this  country— Mr. 
Prescott  controlling,  as  Eleetricinn  of  the  Western  Union 
Company,  its  organ  “Tho  Journal  of  the  Telegraph,”  and 
Mr.  Popo  controlling  “The  Telegrapher,”  generally  recog¬ 
nised  as  an  independent  Journnl. 

In  the  Western  Union  “Journal"  for  September  15th, 
1874,  is  an  editorial  commencing  as  follows : 

"Past  Systems  of  Telegraphy." 

“  0llr  present  issue  contains  a  pnper  on  Automatic  Tele¬ 
graphy,  by  George  13.  Prescott,  copied  from  the  ‘Scientific 
American  ’  of  November  oth,  1870,  and  an  article  on  multi¬ 
ple  .transmission  from  ‘Sabine’s  Electric  Telegraph,’  1809, 
giving  an  account  of  the  various  attempts  made  in  Europe  to 
produce  a  practical  system  for  tho  transmission  of  two  mes¬ 
sages  in  one  direction,  on  one  wire,  at  the  same  time.” 

.  “ltw  '‘general  reference  to  Mr.  Prescott’s  descrip¬ 
tions  of  the  “Automatic,”  and  of  the  Multiplex  systems,  it 
goes  on  ns  follows,  concerning  the  Qunilruplex : 

“  During  the  past  few  months  Mr.  Gl-orge  B.  Prescott  and 
Mr.  Thomas  A.  Edison  linvo  been  industriously  at  work 
upon  their  new  Quadruplcx  Telegraph,  and  having  finally 

hwill  ben  "'“r-1'1  “,0  W'ly  of  ita  laical  success! 
it  will  be  at.  once  put, in  operation  between  all  important 
places  upon  tli.o  Westorm  Union  linos.  As  an  evidence  of 
tho  great  value  it  will  bo  to  tho  Company  in  tho  successful 


*11 

handling  of  its  immense  traffic,  wo  will  mention  that  402 
messages  taken  at.  random  from  tho  current  business  of  the 
day,  were  sent  ovor  a  single  wire  three  hundred  miles  long, 
and  copied  in  a  good  legible  hand  in  one  hour  and  a  half. 
Four  operators  wore  employed  in  sending,  mid  four  in 
receiving.  The  messages  were  of  average  length,  anil  fairly 
represented  the  ordinary  correspondence  of  tho  lines'.  The 
operators  were  all  first-class,  anil  worked  ns  fast  as  they 
could,  one  of  them  receiving  90  messnges  in  an  hour.  They 
could  not,  of  courso,  keep  up  this  speed  all  day,  but  they 
demonstrated  the  fact  that  they  could  do  fully  as  much  busi¬ 
ness  on  ono  wire  with  the  Quadruplcx,  ns  they  could  on  four 
wires  with  tho  ordinary  Morse  apparatus.  With  a  system 
which  can  quadruple  the  capacity  of  all  tho  main  arteries  of 
communication  which  the  Company  possesses,  what  esn  stand 
in  the  wuy  of  its  growth  and  prosperity?  And  in  view  of 
this  fact,  of  what  possible  value  are  any  of  tho  Automatic 
systems  which  are  so  noisily  and  persistontly  kept  for  snle 
before  an  unappreciative  public  I” 

Thus  grouping  under  tho  term  “fnst  systems,”  tho  vari¬ 
ous  “Automatic,”  “Multiplex,”  “  Duplex  ”  and  “Quad- 
rnplex”  telegraphs,  and  this  in  tho  official  organ  of  Messrs. 
Orton  and  Prescott,  whose  testimony  on  this  point  we  are 
willing  to  accept.  Then,  as  commenting  on  this  nrticle,  an 
editorial  appears  in  the  Telegrapher  of  September  20th,  and 
27th,  in  part  as  follows : 

“ The  Edison  and  Prescott  Organ  and  Fast  Systems  of 
Telegraphy. 

“Tho  Inst  number  of  the  Journal  of  the  Telegraph ,  venti¬ 
lates  tho  ideas  of  Messrs.  Edison  and  Prescott  on  tho  subject 
of  “Fnst  Systems  of  Telegraphy,”  at  considerable  length. 

“  Wo  havo  not  spaco  to  follow  out  tho  subject,  and  will  only 
say  that  Mr.  Prescott,  in  his  second  attack  upon  automatic 
telegraphy,  has  not  bettered  his  ense,  and  substitutes  asser¬ 
tions  'which  experience  has  disproved  for  nrgumont. 

“But  it  is  when  tho  achievements  of  Prescott  and  Edison 
.  came  under  consideration  that  the  writer  warms  up  to  his 


theme.  '  The  automatic  inventions  of  Little,  Wheatstone  j 
and  others  sink  into  insignificnnco  alongside  of  the  great  .  jl 
' quadrupled  invention/  which  is  hound  to  at  onco  revoln-  3 

tionize  telegraphy,  and  carry  the  inventors,  the  Western  ■?! 

Union  Telegraph  Company,  and  all  concerned,  on  to  glory  'm 
and  fortuno.  When  this  great  invention  is  fully  developed, 
all  other  fast  systems  of  telegraphy  must  subside  into  insig-  \ 
nificnuco,  and  disappear  from  the  face  of  the  earth  liko  the  '  .V? 
dow  before  the  morning  sun.”  . 

Including  again  these  same  systems  under  tlio  general 
heading,  “  Fast  Systems."  ' > C 

Again,  in  the  Telegrapher  of  January  2nd,  1875,  is  an  >  ■? 
editorial  in  pnrt,  ns  follows  : 

The  discussion  of  Fast  Telegraphy.  $ 

“As  will  he  seen  from  the  columns  of  the  Telegrapher,  the 
discussion  ot  the  automatic,  duplex  and  quadruplex  inven- 
tions  und  systems  is  exciting  much  interest.  We  arc  pleased 
to  open  the  columns  of  the  Telegrapher  to  this  discussion,  l 
as  nothing  can  more  interest  the  telegraphic  fraternity,  and,  Si 

in  fact,  every  person  connected  with  telegraph  interests,  than  |J 

Jthe  development  ot  the  host  telegraphic  system,  and  that  !'■« 

’  which  shall  bo  for  the  best  interest  and  advantage  of  all  ! 
concerned.”  5* 

Classing  under  tho  general  heading  “fast,”  the  auto-  :i 
matic,  duplex  and  quadruplex. 

In  tho  same  paper,  January  16,  1875,  is  nn  editorial  from  >§ 
which  tho  following  is  nn  extract :  IS 

“  The  question  ot  fast  telegraphy,  or  automatic,  duplex  and  4 
quadruplex,  durives  much  of  its.  interest  and  importance  | 

from  the  udvuntngc  which  it  may  atl’ord  to  tho  competing  ■ 

parties.  It  is  reasonable  to  suppose,  therefore,  that  neither  1 1 
party  will  neglect  any  opportunity  to  strengthen  itself  in  I 

this  respect.”  I 

■  I 

Thcso  definitions  of  “  fast  "  ns  applied  to  telegraphy,  are  k 
the  official  utterances  of  tho  two  Journals  in  this  country,  | 

which  are  the  recognized  authorities  on  this  subject  of  tole-  I 


grnpliy,  and  they  derive  their  weight  from  the  fact,  that 
tlioy  wore  written  for  these  journals,  to  becomo  pnrt  of  tho 
standard  and  current  history  of  telegraphy,  and  they  were 
not  written  under  the  bias  of  interest,  either  as  clnimnnt  or 
export.  They  show  conclusively,  that  tho  applications 
which  Mr.  Harrington  now  claims  to  have  issued  to  him, 
fall  clearly  within  tho  provisions  of  tho  assignment,  under 
which  ho  claims.  On  this  point  both  Mr.  Harrington  and 
Mr.  Edison  are  agreed.  They  have  complied  fully  with  all 
oflico  requirements.  They  have  requested  tho  issue  of  the 
patents,  as  per  tho  assignment  of  1871,  and  no  number  of 
assignments  sinco  made  to  Mr.  Prescott  or  anyone  olso, 
should  bo  allowed  l>y  tho  office  to  work  detriment  to  Mr. 
Harrington’s  interests. 

Whatever  cxcuso  thoro  might  liavo  been  for  others, 
through  ignorance,  etc.,  to  attempt  to  deprive  Mr.  Har¬ 
rington  of  his  rights,  there  was  none  for  Mr.  Prescott.  Ho 
know  of  the  assignment — it  was  not.  only  of  record,  hut  it 
was  also  a  matter  of  public  notoriety — ho  knew  it  included 
all  fast  systems  of  telegraphy,  and  lie  know-  that  these  wore 
fust  systems.  The  question  may  bo  asked,  then  why  did  not 
Mr.  Harrington  sooner  move  in  tho  matter?  Hot  only  was 
Mr.  Harrington  absent  at  tho  time,  but  reference  to  the 
editorial  extracts  beforo  given,  and  to  bo  hereinafter  given, 
will  show  that  they  always  stated,  that  Mr.  George  B.  Pres¬ 
cott  and  Mr,  Tliomns  A.  Edison  had  invented  certain  things, 
that  is,  Prescott  and  Edison  were  joint  inventors,  nnd  Mr. 
Harrington  has  evidence  that  tho  original  contract  in  their 
cases  were  so  prepared,  This  was  skilfully  done  to  mislead 
Mr.  Harrington— it  was  tho  first  plan  to  deprive  him  of  his 
logul  and  equitable  right  to  theso  inventions.  He  was  to  bo 
led  to  believe  that  thcso  things  were  the  joint  inventions  of 
Prescott  nnd  Edison,  and  that  whatever  claims  ho  might 
have  upon  the  inventions  of  Mr;  Edison,  ns  solo  inventor, 
he  had  nono  on  those  of  Prescott  and  Edison  as  joint  in¬ 
ventors. 

As  soon  as  ho  learned  from  Mr.  Edison,  that  notwith¬ 
standing  the  newspaper  puffs,  and  the  many  assertions  in 
Mr.  Prescott’s  paper,  that,  in  reality,  Mr.  Prescott  had 


invented  nothing  whatever  therein,  nnd  Mr.  Harrington 
took  steps  to  protect  his  interests. 

Before  concluding,  it  may  ho  well  to  give  a  few  citations, 
showing  that  all  systems  have  been  judged  by  their  capacity 
to  enable  in  a  given  time,  more  work  to  be  done  upon  a 
single  wire; — that  “fast”  referred  to  such  capacity,  and 
lienee  Messrs.  Prescott  and  Pope  ns  Editors,  classed  “auto¬ 
matic,"  “multiplex,"  “duplex”  and  “quadruples"  under 
the  general  heading,  “fast  systems.” 

“Mr.  Cully,  the  engineer-in-ehief  of  the  British  Postal 
Telegraph  Department,  says :  That  the  automatic  system, 
as  it  is  at  present  employed  by  the  post-oflicc,  in  its  tele¬ 
graphic  correspondence  between  London  nnd  the  principnl 
cities,  works  at  a  speed  of  from  twenty  to  one  hundred  nnd 
twenty  words  per  minute.  But  when  the  land  line  is  in¬ 
creased  to  three  hundred  miles,  with  sixty  miles  of  cable  in 
the  circuit,  the  speed  will  be  only  from  forty  to  eighty  words 
per  minute.” 

Here,  “speed”  is  used  as  referring  to  capacity  for  busi¬ 
ness. 

In  Mr.  Orton’s  annual  report  in  1804,  he  lauds  the  quad-  ' 
ruplex  on  account  of  increased  capacity. 

******  “But  the  past  year  has  produced  an  inven¬ 
tion  more  wonderful  than  the  duplex.  Mr.  Thomns  A, 
Edison  and  Mr.  George  B.  Prescott,  the  electrician  of  the 
company,  have  discovered  processes  nnd  invented  apparatus, 
by  means  of  which  two  messages  cun  be  sent  in  the  same 
direction,  and  two  other  messages  in  the  opposite  direction, 
simultaneously  upon  one  nnd  the  same  wire.  ThiB  inven¬ 
tion,  which  they  hnve  christened  the  Qundruplcx,  has  boon 
in  successful  operation  between  our  New  York  and  Boston 
offices  for  the  last  two  weeks,  and  is  satisfactorily  perform¬ 
ing  an  amount  of  work  upon  one  wire,  quite  equal  to  the 
oapncity  of  four  wires  worked  with  the  ordinary  Morso  ap¬ 
paratus.”  ***** 


Extract  from  Journal  of  Telegraph,  (Western  Union' Organ,) 
January  16,  1876. 

*****  <<Tlle  old  system  of  telegraphy  allowed  a 
single  Morso  wire,  in  a  lively  circuit,  to  averngo  per  hour, 
about  forty  messages,  of  twenty  words  each.  A  message  going 
one  way  or  the  other  occupied  the  wire  to  the  exclusion  of 
every  other  message.  *****  But  the  value  of  the 
quadruplex  system  will  be  readily  inferred,  when  wo  state 
that  there  were  sent  and  received,  simultaneously  over  a  single 
wire,  two  hundred  and  thirty-three  messages  in  one  hour. 
The  messages  sent  and  received,  were  such  ns  constitute  the 
every-day  business  of  the  Western  Union  offices,  and,  sup¬ 
posing  them  to  nverngo  twenty  words  encli,  we  have  an 
aggregate  of  four  thousand  six  hundred  and  sixty  icords  over 
a  single  wire  in  sixty  minutes — a  wonderful  achievement  in 
telegraphy."  ***** 

Extracts  from  Editorials  in  “The  Tclgraphcr," 

*  *  *  *  «'pi,u  chief  advantage  to  bo  derived  from  auto¬ 
matic  telegraphy,  nnd  the  way  in  which  it  is  to  bo  utilized 
in  tiio  reduction  of  the  cost  of  telegraphic  service,  is  in 
increasing  very  largely  tho  capacity  of  telegraph  lines  for 
the  transmission  of  business.  It  has  beon  well  said  by  Mr. 
Orton,  in  his  official  reports  to  the  Western  Union  Telegraph 
Company,  that  tho  demand  for  tologrnphic  sorvico  increases 

•  so  rapidly  that  it  lias  become  a  serious  problem,  how  this 
demand  was  to  be  met  without  such  a  constant  addition  to 
tho  wires  us  is  not  only  difficult  to  be  mndo,  but  which 
seriously  diminishes  tho  profits  to  bo  derived  from;  tho  busi¬ 
ness.  Tho  duplex  lias  for  a  timo  mot  this  domund  with 
that  company,  and  they  aro  now  striving  to  still  further 
solve  tho  problem  with  the  quadruplex.  It  can,  however,  in 
our  opinion  only  bo  fully  solved  by  tho  automatic  system, 
and  this  will  eventually' become  a  leading  telegraph  system 
in  this  country.”  *****  November  21lh,  1814. 

*  *  *  *  “It  will  bo  noticed  that  Mr.  Eckert  vory  plainly 
intimates  in  his  curd  to  The  Tribune,  that  it  is  his  expecta¬ 
tion  to  be  able  in  his  now  position  to  give  the  public  cheap 


telegraphy;  With  the  quadruplex  and  the  automatic  sys¬ 
tems,  both  of  which  nro  to  ho  adopted  and  used  by  the 
Atlantic  and  Pneifio  Company,  if  necessary  or  advantageous, 
it  is  expected  to  so  greatly  increase  the  capacity  of  the  lines 
for  business  as  to  mako  feasible  low  rates  for  telegraphic 
servico.”  *****  January  23rd,  1875. 

Mr.  Granville  in  the  “  Telegraphic  Journal  "  of  London 
in  an  article  on  “  Duplex  Telegraphy  ”  last  year  said. 

*  *  *  *  “  A  further  reason  for  the  invention  not  being  fol- 


dh  It  may  bo  well  to. notice  that  in  somo  cases  “  automatic’* 
M  °nd  “  fast  ”  have  boon  UBed  ns  apparently  synonymous,  but 
'  f|  an  investigation  of  each  case  where  there  is  such  appenrance 
jp  will  show  that  it  is  only  a  more  appearance:  that  the  word 

■  |  “  fust”  is  used  in  ouch  instance  by  somo  one  interested  in 

some  system  of  Automatic  Telegraphy,  or  in  some  portions 
thereof,  which  he  pulls  ns  “the  fast”  system,  using  the 
word  as  a  glorification  of  his  particular  wares,  just  ns  somo 
of  the  sewing  machine  companies  advortiso  thoir  machines 


lowed  up  may  be  found  in  the  fact  that  the  traffic  of  those 
days  was  easily  met,  and  telegraph  engineers  were  not 
goaded  on  to  investigate  the  difficulties  attending  the  intro¬ 
duction  of  a  system  which,  by  enabling  lines  to  perform 
twice  their  previous  amount  of  work,  has  virtually  doubled 
the  efficiency  of  the  wires  in  use.” 

*  *  *  *  “It  is  reckoned  equal  in  importance  to  the  dis¬ 
covery  of  Stcinheil,  who  demonstrated  that  return  wires 
could  be  dispensed  with  by  the  use  of  enrth  plates.  In 
resultant  effects  the  ‘duplex’  is  strikingly  similar  to 
Stoinhoil’s  discovery,  since  both  have  doubled  the  resources 
of  telegraphy — the  former  directly,  by  actually  doubling  the 
working  capacity  of  wires ;  the  latter  by  halving  the  lengths 
of  lines,  inasmuch  ns  return  wires  were  proved  to  bo  no 
longer  needed.”  ***** 

The  above  and  tho  citations  previously  given  show  three 
things :  ~ 

1st.  That  tho  value  or  merit  of  various  telegraphic  sys¬ 
tems  has  been  determined  by  a  comparison  of  capacity  with 
tho  ordinary  Morse. 

2nd.  That  all  whose  capacity  was  increased  ovor  this 
standard,  wero  grouped  authoritatively  under  tho  general 
head,  “fust  systems.!’ 

3rd.  That  “  fast  systems  ”  embraces  the  sub-heads  : 

“  Automatic.” 

“  Multiplex.” 

“Duplex.” 

“  Quadruplex." 


as  “  the  best,”  eto.  In  this  sense  Mr.  Harrington  himself 
1ms  called  the  Little  system  “  the  fust  ”  system,  using  “  tho 
fast”  as  u  superlative  adjective  t.  e.  that  it  is  tho  fastest  of  tho 
fust  system,  and  not  us  u  synonym  for  another  name  for  a 
class.  •  He  has.  used  it  (i.  e.  “  tho  fast”)  as  one  superlative 
just  as  Mr.  Orton  hns  used  “  tho  slow  ”  ns  another  superla¬ 
tive  :  ench  form  expressing  individual  views,  and  not  per¬ 
taining  to  the  formation  of  synonymous  nouns  or  names. 

This  kind  of  use  of  tho  adjective  “fast”  is  shown  in  tho 
following  extract  from  an  editorial  in  tho  “  Telegrapher,” 
October  30th,  1874,  criticising  a  letter  of  Mr.  George  Little 
to  Mr.  Orton. 

*  *  *  *  “It  will  be  seen  that  Mr.  Little,  while  admitting 
Mr.  Orton’s  assertions  in  regard  to  the  chemical  paper  sys¬ 
tem  of  Lain,  or  the  later  one  of  Prof.  Wheatstone,  not  being 
covered  by  controlling  patents,  argues  that  his  American 
system  now  used  by  the  Automatic  Telegraph  Coinpuny,  is 
a  very  different  and  the  only  really  fast  telegraph  system, 
and  is  completely  covered  by  his  patents."  ***** 

Mr.  Little  lind  written  ns  follows  in  the  sumo  number  of 
tho  Telegrapher. 

“You  say,  of  ‘  fast  ’  telegraphy :  ‘  This  is  a  favorite 
designation  given  by  its  friends  to  wlint  is  better  known  as 
the  automatic  system.  Why  it  should  bo  called  1  fust  ’  I 
have  never  boon  able  to  comprehend.’ 

“I  will  now  proceed  to  explain  to  you  why  this  system  of 
telegraphy  is  ‘fast’  and  works  equally  well,  if  not  bettor, 
during  such  storms  as  would  scorn  to  render  other  systems 
unreliable,  and  somotimes  useless.” 


Jinny  other  extracts  might  bo  given,  nil  showing  this  ad-  !. 
mitted  uso  of  tho  word  “  fust ;  ”  but,  ns  before  stated  it  will  , 
bo  apparent  tlmt  no  one  of  them  claims  to  define  “  fast”  ns  < 
applied  to  systems  of  telegraphy,  but  that  they  only  give,  | 
so  to  speak,  the  dealer’s  puff  of  his  own  wares — his  own 
opinion  of  his  one  of  many  systems  of  telegraphy  having 
the  same  object. 

We  think  n  careful  consideration  of  theso  points,  estab¬ 
lishes  conclusively  the  fncts  that  the  assignments  to  Jlr. 
Harrington,  covered  any  and  nil  fast  systems  of  telegraphy. 
That  those  in  which  capacity  for  business  is  incrcnscd  over  X 
the  old  Jlorso  standard  are  “fast  systems.” 

That  among  theso  fast  systems  are  the  various  “  Auto-  p 
mntic,”  “  JIultiplex,"  “  Duplex  ”  and  “  Quadrcplex  ”  sys-  g 
terns.  Hence,  that  patents  on  theso  applications  should  | 
issue  to  Jlcssrs.  Harrington  and  Edison  jointly.  f 

And  further,  in  point  of  fact,  both  Jlessrs.  Harrington  ? 
and  Edison  having  requested  the  Hon.  Commissioner  to  so 
issue  tho  patents,  and  this  assignment  having  been  n  matter 
of  record  and  of  public  notoriety  for  over  threo  years  before  ! 
tho  alleged  assignments  to  Prescott,  that  he,  Prescott,  has  no 
rights  whatever  in  these  applications,  or  lawful  stnnding 
before  the  office  where  they  are  concerned. 

So  far  as  Jlr.  Prescott  is  concerned  ns  may  be  said,  (hat 
lie  held  himself  out  to  the  public,  in  a  journal  under  his 
own  control,  ns  a  joint  inventor,  when  in  fact  he  knew  he  -J 
was  not  such  joint,  or  any,  inventor  ut  all.  J 

And  furthermore,  that  tho  President  of  tho  Compnny  of  1 
which  Mr.  Prescott  is  Electrician,  has  so  held  him  out  to  | 
the  public  in  his  official  report  to  the  stockholders  of  tho  -fj 
Western  Union  Telegraph  Company.  'J 

On  this  point  wo  are  justified  in  entering  somewhat  more  ;| 
at  large.  s 

Jlr.  Harrington,  by  searching  investigation,  made  him-  :  | 
self  thoroughly  acquainted  with  the  .condition  of  the  tele-  | 
graph  property  in  tho  country,  as  also  of  tho  details  of  tho  ? 
methods  or  systems  of  telegraphy,  their  cost  of  operating,  I 


19 


their  deficiencies  and  defects,  and  what  was  requisite  to  meet 
tho  growing  demands  of  tho  telegraph  business,  stimulated 
us  it  might  be  by  material  reductions  in  charges  to  a  point 
offering  cheap  telegraphy  for  tho  whole  people. 

We  hove  shown  that  tho  Jlorse  system — the  only  system 
iu  general  use,  and  for  which  all  the  telegraph  offices  of  tho 
country  were  fully  equipped — is  radically  defective,  in  being 
of  limited  capacity,  thereby  involving  great  waste  of  wire 
capacity,  in  its  great  cost  of  operating,  including  annual 
maintenance  of  lines  and  wires,,  us  compared  with  tho 
amount  of  business  transacted,  and  in  its  unceasing  demand 
lor  more  capital. 

Wo  have  shown  also  that  tho  Western  Union  Company 
were  opposed  to  tho  introduction  of  new  systems  for  reasons 

'  And  we  think  it  clear  that  fust  and  economical  systems 
mid  reduced  charges  huve  become  a  necessity  to  the  con¬ 
tinued  existence  of  any  telegraph  company,  and  especially 
to  the  Western  Union  Company,  which  has  such  a  vast 
amount  of  idle  and  unproductive  capacity  in  their  existing 
expensive  network  of  wires. 

Equally  is  it  a  fact  that  Jlr.  Harrington,  at  great  cost  in 
time  and  money,  bus  succeeded  in  developing  such  new  de¬ 
vices  and  new  systems,  ns  will  fully  meet  tho  requirements 
for  cheap  telegraphy,  by  reducing  the  demand  for  capital  and 
the  current  cost  of  operating  to  a  minimum. 

■  Upon  nil  occasions,  in  public  and  in  private,  tho  President 
of  the  Western  Union  Company,  ns  Harrington  has  been 
reiieatcdly  informed  and  believes,  bus  ridiculed  liis  inven¬ 
tions  and  denied  their  claims  of  superiority  us  advanced  by 

Bccognixcd  ns  the  superior  authority  in  telegraph  matters, 
the  Western  Union  Company,  by  its  officers  mid  representa¬ 
tives,  and  especially  by  its  President,  Wm.  Orton,  and  its 
employee,  Geo.  B.  Prescott,  succeeded  in  misleading  the 
public  by  creating  the  belief  that  the  representations  of 
Harrington  and'  his  associates,  Jlessrs.  Little  and  Edison, 
wore  without  basis  in  fact,  and  they  thereby  seriously,  em- 


bnrrassed  Harrington  in  his  pecuniary  n flairs,  an  embarrass¬ 
ment  which  was  ovorcomo  only  with  groat  difficulty. 

These  inisroprcsontations  Anally  culminatod  in  an  official 
attack  upon  the  inventions  controlled  l>y  Harrington,  which 
was  contained  in  an  open  lutter  from  the  President  of  the 
Western  Union  Company  to  the  Post  Master  General  of  the 
United  States,  and  by  that  Company  published  and  spread 
broadcast  throughout  thejand. 

Then  and  for  the  Arst  time  was  Harrington  induced  for¬ 
mally  to  notice  the  attacks  made  upon  his  property  from  that 
authoritative  source.;  not  by  wordy  denials,  nor  by  meaning¬ 
less  correspondence,  but  by  an  open  and  practical  test  of  the 
statements  of  Mr.  Orton,  intended  to  bo  detrimental  to' the 
property  which  Harrington  had  obtained  with  so  much  labor 
and  at  such  great  cost. 

That  test  pas  made  in  presence  of  several  distinguished 
gentlemen,  whose  integrity  could  not  Ire  impeached,  and 
completely  refuted  every  assertion  of  Mr.  Orton.  This  was 
followed  by  public  discussion  and  further  developments,- 
which  indicated  that  if  the  Western  Union  Company  would 
maintain  the  supremacy  which  up  to  that  time  had  been  so 
fully  accorded,  they  must  inaugurate  the  economics  which 
Mr.  Harrington  had  demonstrated  were  in  reach  by  his  fast 
systems,  but  impossible  with  any  system  controlled  by  that 
Company. 

Thus  the  devices  and  systems  under  the  control  of  Mr. 
Harrington  were  fast  attaining  n  commanding  position,  not¬ 
withstanding  the  unceasing  opposition  of  Mr.  Orton. 

Mr.  Orton  had  placed  upon  record  before  the  public,  his 
Stockholders  and  Board  of  Directors,  his  assertions  and 
statements,  that  there  was  no  merit  in  the  new  devices  and 
systems,  and  ho  lmd  also  repeatedly  declared  that  he  could 
and  would  prevent  capital  from  enlisting  in  their  extension. 

Wo  have  cited,  the  most  prominent  of  his  attacks  upon  tho 
merits  of  these  inventions  and  dearly  proved -that  they  were 
baseless  fabrications. 

.  We  may  hero  cite  and  prove  one  of  hut  more  liusuccoss- 
ful  movements  to  frustrate  the  eltbrts  of  Mr.  Harrington  for. 
the  extension  of  liis  systems. 


"  In  pursuance  of  bis  plnns,  Mr.  Harrington  made  n  com- 
tract  with  tho  Pacific  and  Atlantic  Telegraph  Company 
whose  lines  extended  from  New  York,  via  Philadelphia  nn( 
Baltimore,  to  Pittsburg,  Chicago,  St.  Paul’s,  St.  Louis 
Cincinnati  and  Memphis,  to  New  Orleans,  for  the  introduc 
tion  thereon  of  his  new  systems. 

As  soon  as  Mr.  Orton  learned  of  that  contract,  in  fulfll 
meat  of  his  threat  to  prevout  capital  from  associating  rvitl 
Mr.  Harrington,  lie  purchased  a  suflicicnt  amount  of  tho 
stock  of  that  Company  to  incorporate  tlioir  lines  in  tho 
Western  Union  system,  notwithstanding  neither  the  lines 
wires  or  officers  were  required  by  that  Company  for  its  cur 
rent  business,  and  with  the  full  knowledge  that  with  tlio 
Morse  system  they  had  been  operated  at  an  annual  loss. 

In  his  annual  report  for  1873,  reiterated  in  thnt  of  1874 
in  which  this  absorption  of  the  PuciAc  and  Atlantic  Com 
pany  was  announced,  Mr.  Orton,  after  declaring  that  “a 
the  rates  now  established  it  is  impossible  for  nny  competing 
company  to  realize  proflts,”  adds:  “  the  extension  of  com 
peting  lines  has  ceased,  and  it  is  not  believed  thnt  capital 
can  be  found  wherewith  to  inaugurate  new  enterprises  in 
any  quarter.  The  time  is  not  distant,  therefore,  when  the 
Western  Union  Company  will  bo  without  a  substantial  com¬ 
petitor  in  the  conduct  of  n  business  which,  notwithstanding 
tho  enormous  growth  of  the  last  seven  years,  is  still  in  its 
infancy." 

Mr.  Harrington  frankly  admits  and  declares  that  lie  has 
been  greatly  embarrassed  and  delayed,  by  the  opposing 
efforts  of  Mr.  Orton,  and  that  ho  hns  been  subjected  to  large 
losses  in  conscquoiico  thereof,  and  ho  is  now  called  upon  to 
resist  what,  ho  beliuves  to  lio  a  deliberate  conspiracy  to 
doprivo  him  of  property  of  great  value. 

-  As  hns  been  shown,  the  conviction  wns  forced  upon  Mr. 
Ortou,  that  the  Western  Union  Company  wns  necessitated  to 
control  some  fastor  system.  They  owned  tho  “  Duplex’’  of 
Stearns,  tho  immense  advantages  of  which  were  sot  forth  in 
tho  Wcstorn  Union  Boport  of  1873,  in  laudatory  mid  some¬ 
what  extravagant  language.  .  But  with  nil  its  advantages, 
Mr.  Orton  sayB,  in  , that  same  report,  “During  *  *  tho  last 


three  weeks  our  wires  between  the  principal  cities  hnvo  been 
tnxed  to  their  utmost  capacity,  nml  if  we  had  doublo  the 
number  on  some  routes  they  would  hnvo  been  insufficient." 

In  the  report  of  1874,  Mr.  Orton  quietly  declares  tlint 
tlicro  nro  some  serious  defects  in  their  Duplex  which  impairs 
its  efficiency. 

Forced  to  notion,  and  having  utterly  condemned  American 
improvements,  Mr.  Orton’s  failing  health  led  him  to  Eng¬ 
land,  where,  according  to  authentic  information,  he  at 
once  opened  negotiations  for  the  purchase  of  the  Wheatstone 
fast  system.  In  this  ho  failed. 

Some  timo  previously  Mr.  Hnrrington  had  thrown  open 
his  one-wire  lino  between  Now  York  and  Washington,  and 
intermediate  cities,  giving  20  word  messnges  for  25  cents, 
for  which  the  Western  Union  charged  70  cents. 

In  the  appendix  to  liis  annual  report  of  1873,  Mr.  Orton 
makes  an  exhibit  of  the  cost  of  operating  the  Western 
Union  lines  by  their  system,  showing  that  cost  for  two  items 
to  be  32J  cents  for  10  word  messages,  and  declurcs  that  “  no 
amount  of  telegraph  business  at  24  cents  a  mossnge,  which 
it  would  have  been  possible  to  handle,  would  have  yielded 
sufficient  money  to  pay  salaries  of  operators  and  messengors, 
and  cost  of  maintaining  lines,”  adding,  “  nny  considerable 
increase  in  the  number  of  messages  involves  the  provision 
of  additional  wires,  and,  as  the  mileage  of  poles  and  wires 
increases,  the  aggregate  coat  of  maintenance  increases." 

Increasing  the  number  of  words  in  cnch  message  hns,  of 
course,  the  same  effect  as  increasing  tho  number  of  messages 
each  with  fewer  words;  Mr.  Hnrrington  had  not  only  given 
double  the  number  of  words  to  each  messngo,  but  had 
reduced  the  charge  therefor  from  llaltimorcand  Washington 
to  Now  York  about  04  per  cent. 

The  power  of  tho  Western  Union  Company,  wielded  by 
Mr.  Orton,  to  obstruct  Mr.  Harrington’s  progress,  potent 
as  it  was,  had  its  limit;  It  could  neither  repress  the 
energies  and  perseverance  of  Mr.  Harrington  nor  suppress 
tho  merits  of  the  inventions  under  his  control. 

On  his  return  to  tho  United  States,  Mr.  Orton  ascertained 
that  Mr.  Harrington  had  so  far  advanced  his  plans,  as  to 


render  probable  tho  extension  of  his  systems  in  the  imme¬ 
diate  future,  and  with  them  reductions  in  tho  tariff  of 
charges  similar  to  those  between  Washington  and  Now 
York,  which  Mr.  Orton  had  declared  would  bo  simply 
ruinous. 

Having  failed  in  obtaining  the  Wheatstono  fast  system, 
and  failed  in  otherwise  defeating  Mr.  Hnrrington,  Mr. 
Orton,  well  knowing  that  Mr.  Hnrrington  controlled  tho 
Edison’s  invention,  sought  and  obtained  an  interview  with 
a  representative  of  Harrington,  with  a  view  of  negotiating 
for  the  purchase  and  transfer  to  tho  Westorn  Union  Com¬ 
pany  of  tho  Edison  inventions  nnd  patents,  and  thus  reliev¬ 
ing.  his  Company  from  threatened  disaster. 

The  Automatic  system  had  been  perfected  to  a  degree  that 
was  capable  of  utilizing  tho  entire  transmitting  capacity  of 
tho  wire.  With  it  there  may  bo  transmissions  both  ways  at 
tho  same  timo  at  a  rate  of  speed  which  rondors  each  wire 
equal  to  from  twenty  to  fifty  Morso  wires  at  will  of  the 
operator. 

The  calling  of  offices,  and  the  Automatic  signals,  for  the 
“number  of  messages  to  bo  sont,”  “go-ahead,”  "0.  K,” 
etc.,  arc  made  with  Morse. 

If  transmission  is  mndo  both  ways  at  tho  samo  timo,  and 
by  more  than  one  instrument,  tho  Duplex  or  Quadruplex, 
Morse  must  he  used,  giving  to  each  transmitting  instrument 
its  independent  power  of  signalling. 

Mr.  Edison  early  in  1874,  made  the  inventions  for  trans¬ 
missions  automatically  both  ways  at  tho  snmc  time,  nnd  also 
for  the  multiplex  transmissions  of  signals.  -  One  was  an 
improvement  of  tho  Automatic  systuin,  nnd  the  other  was 
an  improvement  of  tho  Morse  system,  applicable  to  auto¬ 
matic  purposes. 

The  systems  nro  distinct.  Tho  Morse,  whother  singly, 
duplexed,  or  qundruploxed,  is  still  the  Morse  system,  though 
that  term  applies  only  to  the  single  transmission.  The  other' 
inventions  come  within  the  generic  name  of  “  fust  ”  und  nro 
denominated  by  tho  distinguishing  titles  of  Duplex  and 
Quadruplex.  Of  the  various  fast  systems,  Mr.  Orton  pro¬ 
nounces  the  Quadruplex  the  fastest . 


■  Mr.  Orton  was  informed  that  the  patents  for  Edison's 
Quadruples  had  not  then  been  applied  for,  and  ho  nppears 
to  lmvo  concluded  that  if  he  could  secure  those  patents,  and 
thus  multiply  his  capacity  four-fold,  he  .could  announce  a 
fast  system  that  would  supersede  for  the  present  nil  necessity 

.  There  is  reason  to  believe  that  at  this  time  ho  caused  a 
carelul  investigation  ot  the  relations  between  Harrington  & 
Edison,  and  was  informed  tlint  Mr.  Edison's  inventions  were 
all  controlled  by  Harrington. 

Hut  the  Quadruples  hnd  not  been  pntented,  and  if  those 
pn tents  should  be  issued,  not  to  Edison  ns  tho  sole  inventor, 
but  jointly  with  some  other  party  subservient  to  the  Western 
Union  Company,  they  might  bo  controlled  by  that  Company. 

The  party  to  carry  out  this  design  wns  George  B.  Prescott. 

In  tho-  absence  of  Hurrington,  Messrs.  Orton  and  Pres¬ 
cott,  upon  -the  assurances  that  ho  had  a  right  so  to  do, 
induced  Edison  to  admit  Mr.  Prescott,  as  a  co-inventor,  nnd 
they  entered  into  a  contract  to  that  effect,  which  bears  dnte 
the  9th  July,  1874,  which  recites,  “Whereas  the  saiil 
Edison  and  Prescott  are  the  joint  inventors  of  certain 
improvements  in  telegraph  apparatus.” 

An  act  on  the  part  of  Orton  and  Prescott  so  unjuBt,  bo 
derogatory  to  the  well  known  rights  of  Harrington,  and  so 
inconsistent  with  fact  and  common  honesty  could  not  bo  per¬ 
mitted  to  pass  unheeded,  and  therefore  Mr.  Hurrington  alter 
his  return  to  New  York,  and  ns  soon  as  he  ascertained  that 
tho ‘  joint  inventions”  ol  Prescott  and  Edison,  ns  publicly 
proclaimed,  referred  to  tho  Quadruples  of  Edison  caused 
Mr.  Prescott  to  be  informed  that  any  patent  issued  under 
such  claims  would  bo  invalidated,  and  Harrington  further¬ 
more  declared  that  if  Prescott  made  and  subscribed  to  the 
path  prescribed  by  patent  regulations  as  co-inventor,  ho 

would  proceed  against  him.  criminally. 

Subsequently,  Mr.  Prescott  thought  proper  to  abandon  his 
claim  as  inventor,  but  unknown  to  Harrington,  mndo  a  new 
contract  bearing  date  the  19th  August,  which  sets  forth 
Edison  ns  the  boIo  inventor,  and  describes  Prescott  os 
asm  nee  and  equal  and  joint  owner ;  .but.  the  official  organ 


of  the  Western  Union  Company,  and  other  journals,  con¬ 
tinued  to  announce  Mr.  Prescott  ns  joint  inventor,  and  that 
tho  property  was  controlled  by  tho  Western  Union  Com¬ 
pany. 

Tho  contract  in  question  is  pcculinr.  It  is  not  claimed 
that  Prescott  paid  any  consideration  whatever,  or  stipulated 
to  pay  any  for  this  valuabla  property ;  and  Edison  doubting 
liis  power  in  tho  premises,  und  unwilling  to  do  anything 
that  might  be  injurious  to  Harrington,  caused  the  contract 
to  be  so  worded  ns  to  retain  in  his  own  hands  the  control  of 
said  inventions,  liy  stipulating  in  clear  and  unmistakeable 
language,  that  said  Prescott  should  have  no  power  of  dispo¬ 
sition  in  any  manner  whatsoever,  without  his  written  con- 

It  is  nowhere  claimed  or  alleged  tlint  Mr.  Edison  has  ever 
«»  giv«u  the  “written  consent”  for.  the  disposition  of  the 
property  to  the  Western  Union  Company;  but  the  same 
%ff  necessities  that  prompted  Mr.  Orton  to  take  the  steps,  already 
herein  recited,  to  obtain  possession  of  tlieso  inventions,  com¬ 
pelled  him,  when  the  contract  was  executed,  to  announco 
or  authorize  to  be  announced  in  his  official  organ  nnd  else¬ 
where,  tlint  the  Western  Union  Company  controlled  a  now 
and  tho  fastest  system  of  telegraph  extant — tho  joint  inveu- 

Ition  of  Prsccott  nnd  Edison, — und  subsequently  embodied 
tho  same  statement  in  his  October,  1874,  annual  report  to 
his  stockholders. 

For  this  there  wns  no  justification.  With  n  purposed 
vagueness,  however,  the  Bill  which  tins  been  filed  in  thu 
Circuit  Court  of  the  United  States  in  New  Jersey  recites, 
that  at  some  indefinite  time  und  place,  in  the  course  of  some 
indefinite  conversation  alleged  to  have  taken  place  some¬ 
where  from  six  to  twelvo  months  prior  to  the  said  contract 
with  Prescott,  Mr.  Edison  said  lie  would  improve-  the 
“Duplex." 

On  tho  of  December,  1874,  without  tho  knowledge 
or  consent  of  Harrington,  Mr.  Orion,  according  to  Exhibit 
A  of  tho  bill,  paid  to  Mr.  Edison,  the  sum  of  five  thousand 
dollars  on  account,  of  certain  inventions,  the  joint  produe- 


tion  of  Prescott  aud  Edison,  for  which  Mr.  Edison  gnvo  a 
receipt,  -  •  • 

Lot  us  examine  this  receipt : 

It  clearly  Bets  forth,  that  the  payment  wm  on  account  of 
devices  or  telegraph  apparatus,  the  joint  invention  of  Gcorgo 
B.  Prescott  and  Thomas  A.  Edison.  Either  such  payment 
did  not  apply  to  the  quadruples  inventions  of  Edison,  which 
Mr.  Prescott  declared  over  his  own  signature,  on  the  19th 
August  previous,  to  have  been  tiie  sole  invention  of  Edison, 
or  it  was  a  continuation  of  the  deception  on  the  part  of  Mr. 
Orton,  which  is  so  apparent  in  this  whole  transaction. 

Assuming  that,  the  payment  was  on  account  of  quadru¬ 
ples,  as  now  claimed  hy  Orton — the  money  was  received 
hy  Edison,  with  a  qualification  and  a  proviso,  via:  Provided 
the  terms  of  payment  shall  he  satisfactorily  adjusted '  be¬ 
tween  the  parties,  and  the  said  telegraph  company. 

Thus  wo  have  an  acknowledgment,  that  at  tliis  date,  De¬ 
cember  ,  1874,  tliero  had  been  no  agreement  us  to  the 
price  to  he  paid  for  tlio  property,  and  that  it  was  left  op¬ 
tional  with  the  parties  ou  either  -side,-  to  terminate  tlio 
negotiation  at  will. 

The  hill  then  sets  forth 

on  the  10  th  December,  1874,  Messrs.  Edison  and 
joined  in  a  formal  proposition  in  writing,  em¬ 
bodying  tlio  terms  upon  which  they  would  sell  to  tlio  Wes¬ 
tern  Union  Company  the  inventions  in  question. 

Had  that  proposition  been  accepted;  had  the  Western 
Union  Company  agreed  to  the  terms  or  price  theroin  set 
forth,  as  satisfactory  to  Prescott  anil  Edison,  there  might 
have  been,  in  tlio  absence  of  prior  ownership  in  Harrington, 
anil  all  freedom  from  fraud,  some  grounds  for  asking  u  com¬ 
pulsory  process  to  compel  Edison  to  trausfer. 

But  it  is  not  claimed,  that  the  proposition  was  accepted. 

On  the  contrary,  it  appears  by  the  allegations  of  tlio  bill, 
that  some  five  weeks  after  tlio  receipt  by  Mr.  Orton,  of  the 
joint  proposition  referred  to,  that  is  on  tlio  19th  of  De¬ 
cember,  1874,  Mr.  Orton  made  a  counter  proposition,- in  tlie 
form  of  an  acceptance  of  some  other  alleged  propositions  of 
Edison  and  Prescott,  of  which  no  copy  is  furnished,  nor 


date  or  signatures  given,  but  claimed  to'  have  been  received 
“  on  or  about  Dccomber  30th.” 

On  tho  same  date,  with  tlio  counter  proposition  ns  above, 
there  appears  to  hnvo  been  paid  to  George  B.  Prescott,  the 
sum  of  five  thousand  dollars,  on  account  of  inventions 
alleged  as  the  joint  property  of  Edison  anil  Prescott,  a 
transaction,  having  for  its  purpose,  an  indirect  acknow¬ 
ledgment  of  a  paper  unacknowledged  by  Edison,  and  to 
show  in  so  fnr  ns  he,  Prescott,  wns  ' concerned,  that  by  the 
acceptance  of  the  substitute  proposition  without  date  or  sig¬ 
nature,  there  might  be  some  basis  for  clniming  an  agree¬ 
ment.  At  the  smile  time,  the  bill  shows  that  trusty  special 
messengers  were  dispatched,  (at  midnight,)  to  place  in 
Edison’s  hands,  tlie  missive  of  acceptance  of  the  so-called 
proposition. 

Why  this  unscomly  haste  after  permitting  five  weeks  to 
pass  without  action  since  the  receipt  of  the  cited  written 
proposition?' 

Mr.  Orton  had  learned  that  Mr.  Edison  lind  finally  repu¬ 
diated  all  connection  with  him  and-  the  Western  Union 
Company,  and  pluced  his  inventions  in  the  control  of  Mr.' 
Harrington,  where  they  rightfully  belonged.'  "' 

Under  any  circumstances  Mr.  Orton  or  the  Western 
.  Union  Compnny  can  but  ask  the  fulfilment  of  a  contract! 

Mr.  Orton  knows,  and  the  testimony  proves,  the  existence 
of  a  prior  contract  with  Mr.  Harrington.  Mr.  Edison  and 
Mr.  Harrington  both  declared  the  contract  of  October  1, 

1870,  and  the  assignment  niid  power  of  attorney  of  April  4, 

1871,  to  be  in  full  force  and  effect. 

There  is  no  dispute  as  to  the  scope  of  the  contract  of 
October  1,  1870,  nor  that  Mr.  Harrington  fulfilled  all  of 
his  undertakings  and  stipulations.  There  is  no  taint  of 
fraud  connected  therewith.  1 

On  the  part  of  Mr.  Orton  and  the  Western  Union  Com¬ 
pany,  there  is  neither  contract  nor  agreement :  giving  to 
either  of  those  parties  the  shadow  (if  title  to  tlio  inventions 
in  question.-  :  . .  ,  : 

The  action  of  Mr.  Orton  and  of- the  Westorn  Union  Com¬ 
pany,  undor  date  of  January  19th,  accepting  some  other 


Second.  An  assignment  of  Edison  to  Harrington,  dated 
the  4th  day  of  April,  1871.  Recorded  in  the  Patent  Office 
on  the  16th  day  of  May,  1871,  Liber  U  13,  pnge  412, 
Transfer  of  Patents.  Appendix  B. 

Third.  Memorandum  of  agreement  between  Thomas  A. 
Edison  and  George  Prescott,  being  joint  inventors  of  cer¬ 
tain  improvements  in  telegraphic  apparatus,  dated  July  9, 
1874.  : 

.  Fourth.  A  partnership  agreement  botweon  Thomab  A. 


The  questions  herein  submitted  ariso  upon  the  follow¬ 
ing  documents  of  record : 


.  First.  A  partnership  agreement  between  George  Har¬ 
rington  and  Thomas  A.  Edison  for  carrying  on  business 
under  the  name  of  the  American  Tolegrnph  Works,  dated 
the  first  day  of  October,  1870.  Recorded  in  the  Patent 
OlHco  on  the  lltli  day  of  January,  1875,  Y.  18,  p.  258. 
Printed  in  the  Appendix,  marked  A. 


o  invention  set  fortli  in  the  annexed  specifics-  || 
I, incut  to  the  said  C.  T>.  having  been  duly 
i  Patent  Office,  in  Liber  — ,  page  — .  g 

iorved  that  u  reissue  is  to  lie  grunted  in  the  |y 
s  the  origiiml  patent,  except  when  the  in-  g 
or  the  original  patent  was  issued  prior  to  g 


it  of  law  the  eighth  regulation  I 


o  law  and  practice  and  regulations  of  the  g 
cm  to  require —  | 

ill  applications  for  the  issue  of  patents  innst  | 
id,  and  sworn  to  by  the  inventor,  whether  J 
isue,  whether  assigned  or  not.  | 

t  no  part  of  a  patent  can  he  assigned  so  as  | 
t  issued  to  an  assignee,  even  at  the  request  i; 

,  the  inventor  may  at  any  time  before  the  i 
1  withdraw  his  application  for  a  patent, 
it  an  application  for  a  patent  muy  bo  ubnn- 
red  at  the  plcasuro  of  the  inventor,  and  this 
indent  of  the  question  whether  ho  has  as- 
srest  therein. 

Id  seem  that  the  application  for  a  patent, 
m  is  placed  by  the  law  and  the  practice  of 
ely  within  the  will  and  control  of  the  inven • 
he  assignee  of  any  part  or  of  the  whole  can- 


Snob  boing  tho  state  of  the  law  and  the  practice  of  the 
Office,  lot  us  present  tho  preeiso  stato  of  facts  in  this  enso, 
as  they  appear  of  rcoord,  as  seen  by  tho  exhibits  in  the 
appendix.- 

Edison,  tho  inventor  of  certain  improvements  in  fast  or 
duplex  telegraphy  and  telegraphic  machines  and  instru¬ 
ments,  tiled  on  the  19th  of  August,  1874,  eortain  applica¬ 
tions  for  pntonts  for  alleged  discoveries  by  him  in  his  spe¬ 
cialty,  and  asked,  for  reasons  controlling  him  at  that  time, 
that  the  patents  might  bo  issued  to  himself,  jointly  with 
Gkoiiok  Prescott,  his  assignee,  and  afterwards,  to  wit,  on 
tho  23d  of  January,  Gkohoe  Harrington,  claiming  to  he 
assignee  of  said  inventions,  filed  his  petition  (Appendix  I) 
that  said  patont  should  be  issued  to  himself  and  Edison 
jointly ;  and  Edison,  by  his  letter  of  tho  same  date,  (Appen¬ 
dix  J,)  revoking  his  request  that  said  patents  should  bo 
issued  to  Prescoit  and  himself  jointly,  asked  that  patents 
for  his  inventions  might  bo  issued  to  himself  and  Har- 
niNOTON  jointly. 

Afterwards  a  hearing  wus  had  before  said  Commissioner, 
who  ordered  that  said  patents,  when  granted,  should  bo 
issued  to  Edison  mid  Prescott  jointly,  ns  assignees.  Ap¬ 
plication  was  then  made  to  the  Secretary  of  tiie  Inteiuob 
to  suporviso  the  action  of  tho  Commissioner  in  that  behalf. 
Whereupon  Edison  appeared  by  his  counsel  before  the 
Secretary  and  asked  that  said  patent  bo  issnod  to  himself 
alone,  and  not  jointly  to  himself  and  Harrington,  nor  to 
himself  jointly  with  Prescoti'. 

It  further  appears,  by  a  contract  dated  October  1,  1870, 
(Appendix  A,)  that  Edison  and  Harrington  had  ontered 
into  a  partnership,  under  the  name  anil  stylo  ot  tho 
“  American  Telegraph  Works,”  to  carry  on  tho  business 
jointly  of  manufacturing  certain  telegraph  instruments, 
(with  a  certain  exception  in  the  contract  sot  forth,)  and  for 


'  Jrfru-  s 


milking  inventions  and  improvements  in  the  transmission  ar 
recording  of  tcicgrapiiic  signals,  ns  in  said  contract  is  s 
forth ;  and  that  said  Edison,  as  his  share  of  the  partnership  a 
sots,  stipulated  that  lie  would  “  give  his  whole  time',  nttentio 

I  talents,  and  inventive  powers  to  the  business  and  intcrc 
;<  of  the  firm,  and  that  he  would  admit  no  other  parties  : 
“  any  interest,  direct  or  indirect,  or  interest  in  the  iinprov 

II  ments  made  or  to  ho  made  by  him,  except  ns  hcrcinuft 
“  set  forth,”  (wliiuli  exception  is  the  invention  imidu  for  tl 
Gold  and  Stock  Company,)  and  hinds  himself  not  “  to  i 
"  vent,  under  said  contract,  any  machinery  that  will  mi 
“  tate  against  automatic  telegraphy,  or  sell  or  convey 
“  any  parties  whatever,  without  the  consent' of  tlio  party 
“  the  sceoiul  part,  any  invention  or  improvement  that  nu 
“  he  useful  or  desired  in  automatic  telegraphy,  and  that  f 
“  any  original  inventions  and  improvements  so  made 
“  the  business  he  shall  receive  a  reasonable  and  prop 
“  compensation  according  to  their  practical  value,  n 
“  things  considered,  such  payment  to  bo  nrndo  in  additii 
“  to  and  irrespective  of  the  proportionate  port  of  the  pi 
“  fits  of  tho  husiuess  of  the  firm  to  which  tlio  party  of  tl 
“  first  part  would  lie  otherwise  entitled,  with  a  proviso 
“  determining  the  manner  in  which  such  reasonable  coi 
11  pensntion  should  be  fixed.” 

Edison  made  an  assignment  to  Harrington  under  date 
April  4,  1871,  (Appendix  B,)  in  the  recitals  of  which,  i 
ferring  to  this  contract  of  October  1, 1870,  Edison  nsshrni 


ere  joint  inventors  of  certain  improvements 
apparatus,  described  ns  magnetic  duplex  a 
ing  the  invention  moro  purticnlarly  descriln 
which  invention  they  arc  to  apply  for  lotto) 
io  United  States  to  bo  issued  to  them  jointly 
enicnt  recites  “  the  improvements  and  invc 
ich  they  are  joint  inventors,  are  all  those  i 
r  making  inultiplo  transmission  ot  magnol 
r  use  hi  telegraphy,  which  are  described 
anil  specifications  now  in  the  hands  of  Geor, 
i  for  the  purpose  of  milking  models  of  n 
hereby  such  invention  can  be  operated,  bcu 
ventions  of  said  parties;”  and  reciting  tl: 
:s  have  an  equal  interest  in  said  joint  lette: 
And  said  agreement  further  recites,  -tl: 
Idison  has  heretofore  cxpoiulcd  SI, 125  t 
d  patent  fcos,  tlio  benefit  of  which  ho  cc 
the  common  interest,  and  waives  rcimbtin 
hat  sum,  or  any  part  of  it,  Prescott  here 
my  solely  and  without  contribution  from  E< 
futuro  expanse  and  cost  of  specifications,  drn 
,1s,  Patent  Ofticc  fees,  and  patent  solicito 
s’  fees,  and  all  other  charges  incident  to  t 
of  lettors-pntont  for  any  of  said  inventions.” 


implications  Tor  Icttors-patent  to  tho  United  States,  ami 
sticli  applications  were  mimliereil  94  to  100,  inclusive, 
and  arc  dated  August  19,  1S74,  and  PitKseorr  is  entitled 
to  an  equal  interest  in  tlic  same,  and  others  mentioned 
1  therein.” 

Then  the  agreement  recites  that  the  same  consideration  is 
o  ho  paid  to  Edison  by  Prescott  therefor  ns  in  tho  agree- 
neat  of  July  9th,  to  wit,  the  payment  hy  Phkscott  of  future 
ixponscs  and  costs  of  getting  out  said  patents. 

After  these  several  contracts  and  agreements,  Edison 
ipplied  for  lettors-patent  for  a  duplex  machine,  which  were 
it  his  request  issued  to  him  and  Harrington  jointly,  being 
NTo.  tr.CjS  t:!,  November  17,  1874.  (Appendix  IT.) 

While  these  several  applications,  from  No.  94  to  100  in- 
dusivc,  and  No.  112,  for  patents  wore  pending,  the  Com- 
ntssioncr  of  Patents  referred  the  question  to  Z.  E. 
Wii.umt,  examiner  in  tlio  Patent  Ollice,  to  ascertain 
whether  these  several  applications  lor  miri.KX  ash  quaii- 

deed  ot  assigiiincut  ot  April  4,  1871,  from  Edison  to 
Hauiiinoton  hy  apt  words  as  a  system  of  “fast  tki.e- 
“  ottAfiiv”  or  “automatic  Tiit.KoitAi-uv,”  and  Wtt.aun  re¬ 
ported  that  they  wore,  in  Ins  pidgment  as  an  expert, 
properly  described,  for  reasons  set  forth  in  his  report.  (Ap¬ 
pendix  lv.)  Upon  this  state  of  facts  the  question  arises,  in 
viow  of  the  law,  to  whom  should  the  patents  issue. 


tested  in  a  court  of  equity;  in 
that  done,  and  of  that  right  tin 
deprive  him  hy  issuing  the  pi 
Phkscott,  bemuse  that  leaves  1 
on  the  part  of  Haiiiunotox,  a 
able  to  defend  himself. 

On  the  other  liaiid,  if  the  pa 
ton  jointly  with  himself,  that 
lor  damages  on  behalf  of  Pat 
not  lie  able  to  defend  himscll 
issued  to  iiimski.f,  lie  admits  l 
have  jurisdiction  at  once  upon 
ton  or  PitKseirrr,  to  decide  tho 
to  iiiako  assigiiincut  of  the  eh 
ids  protection  in  that  casu  we 
the  two  claimaiits  to  mterplea 
judgment  would  determine  the 

This  is  a  very  valuable  rigli 
is  a  sidlicient  reason  for  his  i 
made  that  ail  interest  in  the  pi 
himself  jointly  with  either. 

Aga . in  examination  ol  t 

men  Is  will  show  that  both  ai 
agreement  for  partnership  with 
corr,  and  the  inventions,  wlietl 


L'im  deed  of  October  I,  1870— whieli  is  only  vuluuble in 
s  discussion  us  showing  witut  worn  tliu  “  covenants 
ind  stipulations”  which  nrc  referred  lo  in  the  recital*  in 
i  Jucd  from  Edison  to  IIaiiuiniito.n  of  April  4,  1871 — 
ows  tlmt  Hourly  live  yours  before  lliese  putents  were 
limed,  Edison  agreed,  liy  bis  “  coveiiuiitsuml  stipulations,” 
dcr  soul,  tlmt  liu  “  would  give  bis  whole  time,  attention, 
tulents,  and  inventive  powers  to  the  business  mid  interest 
of  the  firm,  und  udinit  no  other  purties  to  any  direct  or 
indirect  interest  in  or  to  any  inventions  or  improvements 
made  or  to  be  made  by  me,  except  us  herumullei  set 
forth,  but  all  such  shall  enure  and  belong  to  the  parties 
of  the  first  and  second  part,  us  above  set  forth,  in  the 
proportions  set  forth  in  the  sixth  section  of  this  inden¬ 
ture,  excepting  inventions  made  exclusively  for  the  Hold 
and  Stock  Company,  which  are  not  to  be  included  in  this 
agreement.  Hut  said  Edison  binds  himself  not  to  invent, 
under  said  contract,  any  machinery  that  would  militate 
against  automatic  telegraphy,  nor  lo  sell,  transfer,  or 
convey  to  any  party  whatever,  without  tlie  consent  of  the 
party  of  the  second  part  hereto,  any  invention  that  may 


1.  Thoy  are  made  upon  silflicient  considerations. 

2.  There  is  nothing  unlawful  in  the  contracts. 

3.  Neither  is  tiiere  any  objection  in  public  policy  to  th 
making  of  such  a  contract. 

It  is  not  perceived  why  a  man  cannot  carry  on  th 
buxines*  of  invention  tor  the  benefit  of  another  as  wol 
ns  any  other  business;  certainly  there  is  no  statuto  agains 
it.  A  man  having  a  talent  for  invention  lias  a  right  ti 
employ,  use,  and  sell  that  taluut  at  his  pluasuru,  and  sud 
employment  is  for  the  huuofit  of  the  inventors  who  otliui 
wise  might  not  be  ablu  to  exercise  such  talent,  unless  tho; 
cun  find  some  one  to  advancu  the  necessary  uionuy  fo 
their  support  and  to  make  the  necessary  experiments  wliil 
they  are  in  progress. 

If  by,  or  because  of  any  subsequent  act  of  Edison  tiles 
covenants  ami  stipulations  have  been  broken  in  their  tru 
intent  and  meaning  lit  the  assignment  of  these  inventions 
for  which  patents  are  claimed  by  Edison,  to  Pukscott,  tlioi 
Edison  is  dearly  liable  in  damages  to  Hakhinoton,  and  al 
the  more  ccrtumlv  it  Pbksoott  proves  to  be  a  purchase 
for  valuable  consideration,  without  notice. 


Why,  then,  should  the  Commissioner  grope  among  the  j|gg 
liabilities  to  get  ut  tho  fonts,  wlian  ho  could  lmvo  had  fwt 
:  evidence  of  the  (nets  ?  |||j| 

The  Commissioner  again  says :  “  Admitting  that  this  deed,  |»1 
i.  c.,  the  deed  of  Enisox  to  IIakkikotox  of  April  4th,  pAS 
included  these  inventions  in  unmistakable  terms,  no  jdjft 
legal  title  in  them  passed  thereby  to  Harrington.  Tho\|g|| 
nstrnmcnt  Inis  the  force  only  of  an  executory  contract.” 

He  cites  as  authority,  Gibson  v.  Cook,  (2  Blatchford,  gSt 
4;)  Clirtis  on  Patents,  4th  edition,  page  200,  sec.  183, 

Tiio  case  in  2d  Blatchford  by  no  menus  covers  the  point, 
d  tlie  citation  from  Curtis  deals  only  with  the  point  how 
'  any  conveyance  of  an  unpntcntcd  invention  gives 
tice  to  a  purchaser.  Tho  learned  author,  in  summing  i 


"  Wo  aro  considering  a  question  of  notico  of  title,  anil  if  the  \ 
nstrument  supposed  to  opemto  ns  n  notico  could  not  in  the  I  '  | 
inturo  of  things  give  the  information,  can  tho  subsequent  ■  {J 
nirchuscr  bo  bound  to  look  olsowhere." 

How  docs  the  citation  sustain  the  opinion  of  the  Com-  , 
issioncr,  ••  admitting,  then,  that  this  deed  includes  tlieso 
inventions  in  unniistakahle  terms,  no  lcgul  title  then  j»ag 
passed  thereby  to  Harrington  f”  ;3f 

A  legal  title  might  well  enough  he  passed  to  Hnrring- 
n,  of  which  u  subsequent  purchaser  might  not  have  bcon  jjjp 
land  to  take  notice  because  of  tho  record  of  his  deed;  g||| 
it  it  is  difficult  to  seo  how  even  that  could  bo  true  “  if  til 
deed  included  the  inventions  in  unmistakable  terms.”  t'sieU1 
ut  tho  argument  of  the  Commissioner  is,  “tliut  the  proba-  |||j 
bilitioB  are  that  those  inventions  were  not  iucludod  in  Hur-  j||| 
rington’s  deed.”  Why,  then,  will  ho  not  hoar  and  “con-  fjM 


“  sider  evidoneo”  that  they  wore  included?  Ho  holievos 
from  probabilities,  that  they  wore  not  in  esse  at  tho  time  o 
the  execution  of  tho  deed.  Why  not,  then,  hear  evidcnci 
of  that  fact,  and  determine  tho  probabilities  ? 

It  is  true,  Voltaire  soys,  “  that  the  balancing  of  prolia 
“  bilities  is  the  science  of  judges.”  But  lie  is  speaking  o: 
probabilities  arising  from  evidence  given  to  tho  judges 
not  “  balancing  probabilities  ”  whom  tho  judge  decides  tluii 
lie  will  not  “consider  the  evidoneo  because  iio  has  not  tin 
“  authority  of  tho  court  to  consider  evidence.” 

On  tho  contrary,  tho  examiner,  from  his  knowledge  o 
tho  stato  of  tho  art  of  telegraphy,  determined  tho  tact  tc 
bo  thnt  these  inventions  wore  aptly  described  by  the  tenm 
used  in  the  deed  to  Harrington  of  April  4th. 

If  the  argument  of  the  Commissioner  is  to  bo  taken  tc 
mean  that  PitEscorr  became  a  purchaser  without  notice 
and,  therefore,  the  legal  title  vested  in  him  by  tho  execu¬ 
tion  and  record  of  his  assignment,  then  the  question 
whether  lie  took  without  notico  is  a  question  of  fact.  This 
could  be  determined  by  the  record  alone,  if,  as  tho  Com 
missioncr  admits,  “  the  deed  of  HaiikinOtox  includes  those 
“  inventions  iu  iiiimistakuble  terms.”  That  deed  being  re 
corded  before  tho  purchase  by  Piu-snoTT,  lie  must  take  notice 
from  the  record.  If  ho  laid  not  notico  by  tho  record,  was 
it  not  competent  for  Hahuinotox  to  prove  before  the  Com¬ 
missioner,  in  order  to  maintain  his  prior  assignment,  thnt 
Prescott  had  notice  in  fact,  and,  therefore,  no  legal  title 
passed  to  him  ? 

Tho  idea  of  the  Commissioner,  however,  soems  to  be,  al¬ 
though  not  very  clearly  expressed  in  his  opinion,  that  an 
invention  which  is  in  fieri,  i.  e.,  not  perfected,  cannot  be 
assigned  by  deed  so  ns  to  pass  a  legal  titlo  to  tho  assignee 
when  tho  invention  is  patented,  although  it  is  process  ot 
invention. 


of  the  opinion  of  the  learned  Commissioner 
lot  sustained  h)'  any  authority.  On  the  eon- 
mit  that  it  is  now  well  settled  that  an  inventor 
an  interest  in  his  invention  before  it  is  per- 
whilc  it  lies  in  his  mind,  or  even  before  the 
s  come  to-  him. 

itter  to  be  discovered  may  bo  conveyed  before 
cd  is  older  tbnn  the  knowledge  of  tbc  conti¬ 
nued  granted  to  Columbus  a  portion  of  wlinl 
novel-  in  the  new  world  before  be  sailed  from 
t  a  “discovery  in  tbc  usol'nl  nrts,”  ns  the  Con 
ms  it,  is  assignable  before  it  is  perfected,  01 


i  of  Nesmith  cl  at.  v.  Calvert,  (1st  Wnodbur 
-l,)  tlie  court  held  that,  where  an  inventor  hn< 
lachinc  mid  contemplated  that  be  might  niaki 
ivements  upon  his  invention,  mid,  for  a  valunbli 
i,  made  a  deed  conveying  those  improvement 
>  lie  made  and  patented,  when  patented  i 
ity  would  compel  him  to  make  the  conveyance 
title  had  passed  to  the  assignee.  But  it  inn; 
hat  this  was  a  decree  in  equity  by  tho  lenrnci 
wllmry  v.  Minot,  mid  thereby  it  may  have  bcei 
ly  the  equitable  title  passed.  But  in  the  cas< 
v.  Trimble,  (10  Wallace,  3G7,)  before  cited 
suit  at  law  in  which  the  loirnl  title  was  broueli 


paionis  lonnci  it  to  bo,  to  wit,  that  tho  duplex  systems  anti 
quadruple x  systems  wore  indeed  the  fast  systems  of  tole- 
gmpliy. 

Besides,  Edison  liinl  covenanted  with  Hariiinoton  to  im- 
|irove  certain  telegraphic  systems  in  liis  deed  of  April  4, 
IS71,  and  had  followed  up  his  covenant  by  patenting  an  im¬ 
provement  on  the  duplex  system,  and  taking  out  tiio  patent 
jointly  in  his  own  and  Harrington’s  name,  in  accordance 


By  the  printing  and  laying  before  tiio  Coinmis- 


lioner  their  very  elaborate  1 
vliicli  they  collect  citations  1 


f  of  thirteen  pagos,  i 
n  telegraph  literature  n 


ating  tho  automatic  or  fast  system,  and  they  disclose  the 
mrpose  for  which  those  citations  were  made,  in  these 
vords:  “  The  general  literature  of  the  art  thus  discloses 
‘  the  difference  between  the  automatic  ami  duplex  sys- 
1  terns.”  Tlmt  is,  those  citations  of  tiio  literature  of  tho 
irt  were  cvidcnco  that  tho  automatic  or  fast  system  was 
he  duplex  system.  But  what  effect  do  these  citations 
rom  the  newspapers  have  upon  tiio  lottcrs-patcnt,  No. 
56,843,  already  issued  to  Edison  and  Harrington  jointly 
inder  this  deed  ?  Why  cite  evidence  dehors  the  record  2 
Nil  not  the  Commissioner  decide  that  lie  would  “consider 
""thing  but  tho  record  2”  It  is  not  possible  that  lie  meant 
y  this  decision  to  make  this  exception;  oxcept  extracts 
■om  the  TELEGRAPHER,  tho  newspaper  organ  of  tiio 
Western  Union  Telegraph  Company. 


Tho  title  to  Hariiinoton  wot 
ad  employed  from  October  I 


should  bo  in  part  Harrington's  property  upon  paying 
Edison  a  reasonable  additional  compensation  therefor. 
Edison  acceded  to  these  terms,  ns  the  subsequent  deed  of 
April  4, 1871,  shows.  By  this  Harrinoton  took  nil  as- 
signment  of  all  that  Edison  hud  discovered  or  should  dis¬ 
cover.  In  1873  caveats  had  been  tiled  for  some  of  these 
inventions.  Ayenrufter  a  patent  laid  been  taken  out  upon 
another — /.  e.,  for  duplex  telegraph,  and  assigned  to  IIar-  i 
binoton;  prior  to  that,  to  wit,  on  tho  19th  day  of  August 
of  tho  same  yonr,  Edison  had  made  application  for  still  : 
others. 

The  examiner  of  the  Patent  Oflico  decides  tlint  all  of 
these  inventions  are  within  tho  terms  of  Hariiinoton’s 
deed,  which  lmd  been  in  proper  time  duly  recorded. 

Assuming  these  to  bo  the  facts  only  ns  they  nppcnr 
by  the  record,  which  alone  guided  the  decisions  of  tho  Com¬ 
missioner,  would  not  tho  legal  title  to  these  several  inven¬ 
tions  at  once,  upon  the  issuing  of  the  patents  therefor,  have 
passed  to  Harrinoton  ?  It  is  submitted  tlmt  no  tribunal 
lould  come  to  any  other  conclusion. 

Is  tins  state  of  facts  affected  at  all  because  subsequently 
o  these  inventions — in  fact  after  the  caveats  for  some  of 
belli  hail  been  filed — (see  list  of  caveats  in  appendix) —  j 
‘  conveyance  of  a  part  intorcst  liv  Edison  to  Prescott  in  j 
1  Buck  inventions  was  made?” 

This  would  depend — 

First.  Upon  the  questions  whether  tlint  deed  was  made 
ipon  an  adequate  and  conscionnblc  consideration,  and  had 
icon  duly  executed,  and  not  abrogated  or  nnnnllod.  Bat 
ihese  are  questions  of  fact. 

Second.  Upon  tho  question  whether  Prescott  had  con-. 
i tractive  legal  notice  because  of  the  record  of  the  assign¬ 
ments  to  Harrington  in  tho  Patent  Office,  or  actual  notice 
hereof,  and  of  Harrington’s  interest  therein. 


:  Referring  to  tho  record  only,  ho  had 

legal  effect  of  record  of  tiie  nssignmei 
and,  in  the  language  of  the  Commission 
“  IIarrinoton’s  deed  includes  those  ii 
“  tnknhlc  terms,”  then  Prescott  lmd  eo 
tiuc  of  Harrington's  claims,  and  was  ; 
Whether  he  lmd  actual  notice  is  n  qn 
shown  by  evidence.  In  either  case  Pr 
in  these  inventions  ns  against  Harrinot 
whether  Prescott  had  a  legal  title  ns  a 
(mid  he  might  well  Iinve  one  ns  again 
such  n  one  ns  against  Harrington,)  do 
the  evidence  of  tho  facts  which  the  C 
mines  lie  “cannot  consider.” 

It  will  be  useful,  upon  determining  t 
under  all  these  circumstances,  to  cons 
tion  of  Prescott  in  this  affair,  as  nppen 
With  tho  record  before  him  of  all  1 
whatever  they  might  be,  in  this  class  < 
cott  makes  a  contract  on  the  9th  of  July 
to  be  a  joint  inventor  of  all  these  impr 
ho  is  to  have  one-half  thereof  by  payin: 
and  solicitors’  fees  for  procuring  the  pal 
dcr.  But  on  the  19th  of  August  follow 
his  claims  as  joint  inventor  to  any  of 
claimed  to  be  tho  purclmsor  of  onc-lml 
them,  in  consideration  of  paying  only  th 
solicitors’  fees  for  taking  out  tho  pntcnl 
And  Prescott  was  curofnl  to  tic  up  I 
that  the  real  inventor,  Edison,  could  hi 
without  his  consent, by  tho  provisions  wii 
considered,  that  neither  was  to  “  sell,  n 
“  dispose  of  the  wliolo  or  any  part  of  his 
“  volitions  or  lotters-patent  therefor,  or 


Mm 


ut  tlio  written  consent  thereto  first  obtained  of  tho  other 
arty.”  Again :  “  That  neither  of  said  parties  will  him- 
elf  lnanufactnre,  nso,  or  sell,  nor  grant  license,  nor  the 
iglit  in  any  way,  to  any  other  party  to  inaimlaetnre.  use, 
r  sell  any  of  said  inventions  or  any  improvements 
hereof,  or  any  machines  embodying  01  at  Lit  lc  <  mtaminj 
ny  of  said  improvements  or  inventions  described  by  any 
f  said  lettors-patent,  without  tho  written  consent  first 
htained  of  tho  other  party.”  Again :  “  No  sale  of  nny 
f  Said  inventions,  and  no  liccnso  or  right  to  make  or  use 
io  same  in  any  way,  shall  ho  made  or  given  oxcept  ut  a 
rice  to  which  botii  parties  agree  in  writing,  and  all  net 
rofits  shall  ho  equally  divided  between  tho  parties 
crcto.”  (Appendix  (J.) 

t  will  lie  observed  that  substantially  these  same  provis- 
s  were  in  tho  previous  contract  of  July  0,  wherein 
hscott  is  recited  to  tic  the  joint  inventor  of  all  these  im- 
vomonts ;  with  how  much  of  truth  will  appear  from  tho 
t  that  within  forty  days  afterward  ho  relinquished  all 
ims  to  1)0  such  joint  inventor  in  his  deed  of  August  9. 
did  Pkkscott  know  of  tho  great  value  of  these  inveii- 
is,  of  which  lie  was  not  the  joint  inventor  ut  the  time  ho 
lined  to  lie  tlit  joint  inventor  thereof,  to  wit,  on  the  9th 
fitly,  187-1-  ?  Did  lie  know  of  (lie  vast  value  of  all  these 
u-ovoments  August  9,  the  time  lie  ulnims  to  have  bought 
i-hnlf  of  all  of  them  and  tho  profits  thereof  of  Edison, 
I  tied  him  up  by  covenants  so  that  ho  could  neither 
nul'acture,  sell,  use,  or  permit  others  to  manufacture, 
I,  or  use  tho  invention,  when  he  agreed  to  pay  for  tho  one- 
I  ot  such  undivided  interest  therein  only  tho  necessary 
cut  Ollico  fees  and  solicitors’  fees  to  tnko  out  the 
unts  ?  (Appendix  D.) 

Vs  tho  loarncd  counsel  in  their  brief  have  put  before  tho 
minissionor  citations  from  newspapers  ns  ovidcnco  of 


now  Jidison’s  assignment  to  JIakiiinoton  ought  to  bo  con¬ 
strued,  and  tho  inferences  to  ho  drawn  therefrom,  and  tho 
probabilities  arising  out  of  it,  they  will  permit  me  to  make  a 
Binglo  quotation  from  a  newspaper  for  tho  purpose  of  showing 
knowledge  of  tho  utter  uncouscionnhlcncss  of  this  protcndc|l 
bargain  nnd  deed  ot  assignment  to  Prescott,  wherein  lip 
claimed — ns  his  subsequent  deed  of  19th  August  sIiowb 
falsely — to  bo  tho  joint  inventor  in  those  wonderful  im¬ 
provements  in  the  system  of  tolograpliy. 

It  will  be  observed  that  tho  deed  of  the  9th  of  July  was 
not  recorded  until  afturwurds,  so  that  on  tho  night  of  that 
day  these  inventions  had  not  become  known  to  tho  world. 
Now,  tho  New  York  Daily  Times  is  a  morning  paper,  and 
on  tho  morning  of  the  10th  tho  articlo-  appeared,  which  is 
printed  in  the  Appendix,  marked  L,  in  which  it  is  cluinicd  : 


till i 


niii 


from  tlio  TELEGRAPHER  newspaper  to  prove  tlio 
cnees  and  probabilities  to  ho  drawn  from  Hnrrin 
deed  of  assignment ;  and,  if  so,  it  certainly  shows  t 
tent  to  ■which  the  art  of  robbing  an  inventor  of  the 
of  bis  skill  for  the  benefit  of  an  overgrown  corpe 
lias  been  carried  in  modern  times. 

If,  under  these  circumstances,  in  view  of  tlio  fnc 
penring  on  the  record,  the  Secretary  deems  it  his  d 
sign  n  patent  to  carry  out  this,  which  wo  have  now  n 
to  say  is  an  overreaching  bargain  on  the  part  of  Pm 
so  that  he  may  enjoy  its  fruits  and  deprive  Edison  tl 
then  the  Western  Union  Telegraph  will  indeed  “co: 
tlio  patent  for  this  discovory,  which  is  the  “  solution 
“  the  future  difficulties  in  telegraphic  science,”  i 
“  not  inferior”  to  those  of  Morso  and  of  Stearns. 


All  which  is  respectfully  submitted. 


BENJ.  E.  BUTLER, 


GEOKGE  B.  I 


Witnesses : 

Hahold  Seiihell, 
Lemuel  W.  Seiuiell. 


stop,  luid  ono  no 
only  to  bo  fluid  oi 


si 


IN  TUB  MATTER 


Oh) 


OF 

HARRINGTON  and  EDISON 


PRESCOTT. 

BEFORE  THE  SECRETARY  OF  THE  INTERIOR. 


Briof  in  bohalf  of  Gcorgo  Hurrington,  in  roply  to  tlio  Briefs 
•  of  Counsol  for  Goorgo  Prescott. 


II  argument  for  Mr.  Prescott,  filed  in  pursuance  of 
tlic  decision  of  the  Secretary  to  allow  “  arguments  on  the 
merits  of  the  case,”  is  almost  entirely  a  plea  that  the  Sec¬ 
retary  will  not  consider  the  merits  of  the  case  at  all. 

The  Secretary  has  decided  that  he  has  juristliclion,  and 
will  exercise  it.  Yet  it  is  still  contended  that  he  “  is 
without  jurisdiction  to  consider  whether  the  Commis¬ 
sioner  has  erred  judicially,”  aud  that  to  look  beyond  the 
question  whether  the  Commissioner  has  acted  without 
fraud  or  collusion,  “would  he  violently  subversive  of  the 
true  order  of  public  business."  In  order  to  persuade  the 
Secretary  not  to  interfere,  the  counsel  for  Mr.  Trescott 
assert  that  for  errors,  such  as  arc  alleged,  a  peculiar  and 
most  efficacious  remedy  by  bill  in  equity  is  given  by  sec¬ 
tion  4915  Revised  Statutes. 

This  is  by  uo  means  certain.  Tito  remedy  provided  in 
that  section  seems  to  bo  ouly  for  an  inventor,  us  the  court 


may  only  adjudge  tlio  applicant  entitled  “to  rccoivo  a 
patent/or  his  invention,"  and  as  Mr.  Harrington  is  not  tlio 
inventor  in  this  case,  but  an  assignee  merely,  the  section 
does  not  appear  to  benefit  him. 

Tins  view  is  strengthened  by  tlio  construction  of  that 
section  which  gives  a  right  of  appeal  from  tho  decision 
oi  the  Commissioner  to  the  Supromo  Court  of  tho  Dis- 
trict  of  Columbia  (now  Rovised  Statutes,  Sec.  4911). 

\  In  II  lately  v.  Usher,  4  &shcr  84S,  it  was  decided  that 
N10  relusul  of  the  Commissioner  to  grant  a  patent  to  an 
assignee  does  not  form  the  subject  of  mi  appeal,  which 
tins  reference  to  tho  contents  of  a  patent,  and  not  to  a 
controversy  us  to  who  owns  it. 

If  tuis  ns  so,  then,  instead  of  withholding  hia  exami¬ 
nation  into  the  rights  of  tho  parties  iu  the  present  case, 
there  lb  the  strongest  reason  why  the  Secretary  should 
c  ose  y  scrutinize  tho  merits,  inasmuch  as  ucithcr  tho 
appeal  nor  the  equitable  remedy  given  to  inventors,  is 
allowed  upon  a  question  of  ownership 

All  through  the  arguments  for  Mr.  Prescott,  there  is 
an  appeal  not  to  look  into  the  merits,  the  equities  of  tho  case, 
a  us  so  before  the  Commissioner.  There,  in  substnuco, 
e  ni  guinea  t  was — and  the  Commissioner  adopted 1  it — 
lou  must  disregard  tho  “equities,’’  ignore  tho  assign- 
men  to  Harrington,  although  prior  iu  date  to  tho 
no  o  I  rcscott,  and  for  a  valuable  consideration ;  al¬ 
though  Prescott  had  full  notice  of  it  by  the  record, 
which  exhibits  no  consideration  on  his  part  ;  the  Commis- 
sioner  can  only  decide  who  has  the  legal  title,  leaving  it 
a  Court  of  Equity  to  enforce  tho  assignment  to  Har- 
mgon,  which  was  held  to, be  merely  “  an  executory  con- 
tiact  and  although  permitted  by  the  law  (Revised 
4’8?5)'  “Ud  tUe  ruloa  P«ent  Office 

(  ole  118),  you  shall  not  even  concede  to  the  Commis¬ 


sioner  the  right  to  consider  ovidonce,  ontsido  tho  record, 
as  to  outstanding  equities. 

Wliou  counsel  admit  that  tho  Secretary  has  a  right  to 
interfere,  to  prevont  fraud — in  fact  that  it  would  bo  his 
duty  to  do  so — tlioy  surrender  this  part  of  their  easo. 
That  is  simply  tho  powor  to  do  equity. 

The  grant  of  a  patent  is  not  a  more  ministerial  act,  but 
one  involving  the  exercise  of  judgment  and  discretion.  (See 
Commissioner  of  Patents  v.  Whitley,  4  Wallace,  538,  where 
a  mandnmus  wns  refused  upon  these  grounds.)  This  ex¬ 
ercise  of  judgmont  and  discretion,  involves  the  doing  of 
justice  and  equity. 

Why  should  the  Secretary,  or  tlio  Commissioner  who 
issues  patents  undor  his  direction,  bo  asked  to  disregard 
the  equities  of  tho  case  ? 

Tho  commissioner  bnsos  his  decision  against  Harring¬ 
ton  upon  tho  presumption,  that  the  inventions  claimed 
woro  not  in  esse  on  tho  4t.h  of  April,  1871,  when  Edison 
nssigued  to  Harrington.  ' 

This,  to  use  liis  own  language,  is  “  in  the  absence  of 
positive  evidence  on  this  point,"  and  beeauso  “  it  is  incredi¬ 
ble  under  tho  circumstances,  that  an  inventor  like  Edison 
should  allow  such  valuable  improvements  to  lio  tlireo  or 
fonryenrs  after  completion,  without  applying  for  patents. 
Tho  inferences  of  law,  and  fact  which  I10  makes,  it  is  re¬ 
spectfully  assorted,  are  nliko  orroneous. 

An  invention  does  not  date  morely  from  the  time  of 
its  “  completion”  or  perfection. 

Morsodidnotlilo  his  caveat  until  1887,  yet  tho  Supromo 
Court  in  awarding  to  him  priority  of  invention  (Morse 
v.  O’Reilly,  15  Uownrd,  109),  said,  that  in  1882  there  is 
reasonable  ground  for  behoving  that  tho  process  and 
means,  the  combination,  powors  and  machinery  were 
arranged  in  his  mind,  .and  developed  so  far,  that  he  wns 


confident  of  ultimate  success,  nml  that  lie  pursued  hii 
investigations  with  unremitting  energy  nml  industry. 

in  Oo«  v.  Massachusetts  Firearm*  Co.,  1  Fisher,  10S- 
tlm’l'  tWlv  n  1,1  v1,  t,mt  “tl10  ,,nt0  of  tl,c  '''volition  ii 
!  H  °  A‘°  lllsuovory  o1'  the  principle  involved,  am 
ho  attempt  o  embody  that  in  some  machine,  no Ithedal 
of  the  perfecting  of  the  instrument  ” 

%  reference  to  the  “  Telegrapher”  (a  paper  mud 
T"1  f°r  Mr‘ 1>raeott).  of  Saturday,  Arm, 
Donmv  m  ’  n  tlosol,,l’tio,>  ha  fonml  oi’  “Edison’: 
JJourni  in vn  juttek,’  with  full  specification  and  din 
,iam,  commencing  as  follows: 

•  ^ .l.no,lns  tl,'s  ingenious  armngonicnt,  two  com 

at  Tims  u'8  Umy  1,0  tril"smitted  in  opposite  dikeotions 

it  from  l/‘  C  tystem’  for  tho  purpose  of  distinguishing 

invention  i„  n  •  °  10  commcncomont  of  Ellison’s 

It  til  3  "!°  °f  (l°v°loPi„g  telegraphy. 
OhomSl'lt,r"’  t  ,aVE,lis0"’  lli9  Aent  for  Duplex 
1874  2,  S''ai,l‘f’  No’  15C.8M, dated  Hovombor  17th, 

torios,  resist^  tm.  "m0  “*  -'P'“y  >»“• 

manner  tlmt  tl  ...  '  co"»eetioiis,  arranged  in  such  a 
be  neutralized  '°  °  t°0t  °*  t*‘°  tnuismitting  hi 

VTaua^0n  hC  rCC“Vina  ot  tl 

(Soo  page  40,  Brief  of 

that  the  comm'iMinI,D  DEFOaB  ’'IM’ tho  Secretary  will  soo 
vontions  in  eo,,trovomt\ttre2t  !22i2Rt1t^t|tl\0 


6 

of  tho  assignment  to  Harrington.  It  is  not  claimed  that 
they  were  absolutely  perfected  then,  nor  is  it  necessary  to 
do  so.  They  were  in  a  state  much  advanced  beyond  tho 
inchoate,  to  which,  ns  it  has  been  shown,  an  assignment 
will  attach  on  thoir  perfection.  Hot  only  was  tho  “  prin¬ 
ciple  discovered,”  but  tho  process,  combination,  powers  and 
means  arranged  in  a  working  machine,  in  courso  of  tho 
improvements  and  perfection  since  attained,  embodying 
the  essential  features  of  the  invention. 

II 'bat  then  remains  of  Prescott’s  claim  ? 

Equities  he  has  none.  Tho  commissioner  based  tho 
decision  in  his  favor  on  a  supposed  state  of  facts,  in  re¬ 
gard  to  which  it  appears  he  was  entirely  in  orror.  Even 
if  tho  inventions  were  inchoate  and  experimental,  boing 
perfected  before  the  Prescott  assignment,  tho  deoil  to 
Harrington  took  oifcct  upon  and  attached  to  them  as 
soon  as  they  came  into  complete  existence.  Tho  eases  hereto¬ 
fore  cited  fully  sustain  this  position,  and  there  are  numer¬ 
ous  others. 

The  oxi.y  plea  left  to  tho  counsel  for  Prescott  is  the 
one  urged  so  strenuously,  that  tho  only  inventions  as¬ 
signed  by  Edison  to  Harrington  wore  such  ns  related  to 
“fast  telegraphy ,”  and  that  tho  “  duplox  ”  and  “  quadru¬ 
ples  ”  w’ore  uot  such  inventions. 

Yet  it  is  claimed  (sco  p.  20,  Brief  for  Edison)  that  tlioy 
“  will  quadruple  tho  usefulness  of  tho  175,000  miles  of 
wire  owned  by  tho  Western  Union  Tolograph  Company," 
(Hr.  Prescott’s)  who  will  in  consoquonco  of  tho  alleged 
ownership  of  thorn,  “  need  to  oroct  but  2,000  miles  of 
wire  noxt  year”  instead  of  20,000. 

In  referring  to  Steam’s  Duplox  in  1872  (sec  Brief  for 
Prescott,  p.  24),  “  Tho  Journal  of  tho  Tolograph  ”  says 
“  though  it  docs  uot  quickou  tho  process  of  transmission, 
it  practically  does  so,  by  doubling  the  capacity  of  every  wire.” 

It  has  already  boon  shown  that  tho  partnership  botwoon 


T 


,1,UWM  m,u  unrnngcon,  covered  mvontionB  of  “nil  and 
whatsoever  may  be  required  Inj  the  various  systems  of 
Telegraphy." 

It  in  also  shown  that  ovon  iindar  the  Tlarrington 
assignment  of  1871,  Edison  was  not  only  to  develop  into 
'•so,  by  practical  instruments,  the  Littlo  or  other  system 
ol  Automatic  or  fast  system  of  Telegraphy,  but  to 
improve  and  perfect  such  instruments  and  machinery  by 
addixo  xtiEUBTO  from  time  to  timo,such  further  inventions 
as  experience  should  demand,  and  1ub  ability  ns  an  inventor 
and  electrician  might  suggest  and  permit. 

Supposing,  then,  for  tlio  sake  of  the  argument,  that 
1.  rescott  can  shield  himself  from  the  equities  of  tho  part¬ 
nership  article  by  an  alleged  want  of  notice,  and  that  tho 
words  ot  the  deed  of  1871,  just  quoted,  nro  not  large 
enough  to  cover  tho  inventions  in  controversy,  they  nro 
followed  in  tho  latter  instrument  by  Inngungo  about  which 
t tore  can  be  no  doubt,  and  in  tho  conveyance,  itself,  viz.: 

Including  therein  all  and  whatsoever  of  my  improve¬ 
ments  and  inventions,  made  or  to  bo  made,  and  of  all  tho 
patents  that  may  bo  issued  therefor,  that  abb  ob  mat  he 
ai  w.ioABi.E  to  automatic  telegraphy  or  mechanical  print- 

ATo  ingenuity  can  controvert  the  fact,  that  these  duplex 
and  quadruples  inventions  nro  “  Ai>ri,iaAnr.B  to  Auto¬ 
matic  Teregraphy.” 

The  Letters  Patent,  No.  156,848,  dated  November 
17th,  1874  to  Thomas  A.  Edison,  for  “Duplex  Tele¬ 
graphy,”  commcnco  ns  follows : 

“  Iho  object  of  this  invention  is  to  transmit  two  dis¬ 
pa  e  les  over  the  same  wire,  at  the  same  time,  by  tolegrnphs 
li.MPI.OYINO  PERFORATED  TRANSMITTING  PAPER,  and  cllOmi- 

cnl  receiving  paper.” 

.  An,d  tldB„V01'y  patent,  at  tho  request  of  Edison,  was 
ucd  to  Edison  &  Harrington.  Mr.  Prescott’s  counsol 


j,  27  of  their  1st  Brief)  admit  that  tho  “  automatic  sys- 
em,”  and  the  “multiple  transmission  system  maybe 
jbed  together,  “  that  is  to  say,  sovoral  messages  may 
“Xneou’sly  transmitted  by  the  B-ftaueous  oper¬ 
ation  of  sovoral  automatic  signalling  machines,  thus  ad 
ing  the  element  of  ‘fast  ’  to  the  dement  0fmul!1PUcU,J- 
By  the  contract  of  1870,' Edison  &  Harrington  wore  to 
bo  partners  in  all  inventions  relating  to  the  various  systems 

^Thfasrignment,  Edison  to  Harrington,  of  1871,  recites 
the  previous  agreement  between  these  parties,  and  tk 
tZZ,  thus  clearly  expressed,  will  aid  to  construe  the 

laTr^cmfcould^capct'the  force  of  ^is  “greement 
on  tho  ground  that  he  had  no  notice  of  it  which  :  de 
nied,  surely  ho  is  bound  by  the  u.icquivooal  erms  ol 
assignment  itself,  which  cover,  as  a  ;ove  9‘  °  vl  ^10t  “ 
by  equitable  construction,  but  as  a  matter  of  fact,  the  inve 
tions  now  in  dispute.  jj.  B.  LATROBE, 

LEONARD  MYEKS, 

Of  Counsel  for  Barrington. 


Hr!  mem  < 


THE  WESTERN  UNION  TELEGRAPH  COMPANY 
Complainant*, 


THOMAS  A.  EDISON  and  GEORGE  U.  PRESCOTT’, 
Defendants. 


ANSWER  OF  THOMAS  A.  EDISON. 


KEASUE' 


■  NEW  YORK: 

U  A  K  B  It  &■  Q  6  D  w.  I N,  P  H I  N  T  BUS, 

No.  35  P  a  It  K  Itow. 

1875. 


GkOKOE  B.  PltESCOTT, 

Defendants. 


The.  several  answer  of  Thomas  A.  Edison,  one  of  the 
defendants  to  tho  J>ill  of  complaint  of  The  Western  Union 
Telegraph  Company,  complainants: 

This  dolcndnnt  now  and  at  all  times  hereafter,  saving 
nnd  reserving  to  himself  all  manner  of  benefit  nnd  advan¬ 
tage  of  exception  to  the  errors,  nnd  insufficiencies  in  the 
complainants’  snid  bill  of  complaint  contained,  for  an¬ 
swer  thereto,  or  unto  so  much  and  such  parts  thereof  ns  ho 
is  advised  is  mntorinl  for  him  to  make  answer  unto,  answers 
and  says : 

That  he  admits  that  tho  Western  Union  Telegraph  Com¬ 
pany  is  a  corporation  doing  business  under  the  laws  of  the 
state  of  Now  York  for  tho  purpose  of  operating  telegraph 
lines  in  that  state  nnd  olsowhcre,  and  having  its  principal 


plnco  of  business  in  the  city  of  Now  York,  irad  that  this 
defendant  wns  boforo  and  since  January,  1874,  n  resident 
of  the  city  of  Newark,  in  this  stnto. 

But  this  defendant  denies  that  in  or  previous  to  the  snid 
month  of  January,  lie  entered  into  any  arrangement  or  agree¬ 
ment  with  the  complainant  that  this  defendant  should  en¬ 
deavor  to  invent  improvements  in  Stearns’  Duplex  System 
of  Telegraphy,  and  other  Duplex  apparatus,  nnd  should  use 
tho  lines  and  workshops  and  materials  of  tho  complainant  for 
that  purpose,  except  in  tho  manner  and  under  the  circum¬ 
stances  hereinafter  particularly  sot  forth.  And  ho  domes  thnt 
ho  over  made  any  agreement  with  tho  snid  company,  thnt 
whatever  inventions  should  bo  mado  by  him,  nnd  nil  patents 
thnt  might  be  secured  therefor,  should  bo  assigned  nnd  con¬ 
voyed  to  tho  complainant  upon  payment  of  such  price  ns 
should  be  ascertained  by  agreement  or'liy  arbitration. 

And  this  defendant,  further  answering,  snys : 

That  the  circumstances  under  which  ho  used  tho  wires 
nnd  property  of  tho  said  company  for  tho  purposes  of  exper¬ 
imenting  for  improvements  in  Telegraphy  concoivcd  by 
him,  and  his  relations  to  tho .  snid  complainant  with  refer¬ 
ence  to  the  salo  and  transfer  of  his  inventions  nnd  patents 
are  hereinafter  fully  and  particularly  sot  forth. 

And  this  defendant,  further  answering,  admits  thnt  ho  wns 
from  timo  to  time,  ns  hereinafter  stated,  allowed  to  use  the 
services  of  somo  of  the  omployces  of  tho  complainant,  nnd 
that  his  experiments  were  continued  for  sovoral  months  in 
endeavoring  to  invent  improvements  hy  which  moro  than 
one  incssngo  could  bo  sent  over  ono  wiro  at  tho  snino  time, 
but  ho  denies  Hint  tho  snino  wns  hy  virtue  of,  or  in  pur¬ 
suance  of,  any  arrangement  or  agreement  for  tho  sale 
or  transfer  of  his  inventions  or  patents  ns  stated  in  snid 
bill,  but  solely  for  tho  purposo  of  enabling  him  to  per¬ 
fect  nnd  develop  his  improvements,  to  ho  disposed  of 
thereafter  ns  lie  might  deem  best  for  his  own  advantage. 

And  this  defondant,  furthor  answering,  doilies  each  and 
ovory  of  tho  statements  of  tho  snid  bill  concerning  his  agree¬ 
ments  with  Gcorgo  B.  ProBoott,  tho  electrician  of  tho  snid 


complainant,  and  Ids  negotiations  with  the  said  complainant 
for  tho  salo  and  transfer  of  his  inventions  and  patents,  ex¬ 
cept  so  far  ns  the  same  are  admitted  nnd  explained  in 
the  statoment  of  said  transactions  hereinafter  contained. 

And  this  defendant,  further  answering,  says  thnt  ho  is 
now  twenty-olglit  years  of  age,  nnd  is  an  inventor  and  olcc- 
tricinn,  having  been  engaged  in  that  business  for  fifteen 
years  nnd  more ;  thnt  from  n  very  early  ago  his  attention 
lias  been  directed  to  tho  invention  of  telegraphic  apparatus 
nnd  methods;  thnt  prior  to  1809  ho  had  been  employed  ns 
a  telegraphic  operator  in  the  Western  Union  Telegraph 
ollico  at  Cincinnati  nnd  elsewhere,  and  in  that  year  he  had 
a  small  shop  of  his  own  in  Boston,  nud  then  applied  for  a 
patent  for  his  first  perfected  machiiio  which  wns  n  machine 
for  recording  telegraphic  signals  by  printing;  that  sinco 
that  timo  ho  has  directed  liis  attention  to  improving  the 
the  facilities  with  which  such  signals  might  bo  transmitted 
and  recorded ;  thnt  while  employed  ns  an  operator  lie  wns 
engaged  in  attempting  to  invont  the  requisite  machinery 
and  means  to  carry  forward  what  is  now  known  ns  Duplex 
Tolographing,  which  experiments  began  ns  early  as  1805. 

And  this  defendant,  further  answering,  says'that  in  the 
courso  of  these  experiments  he  became  satisfied  thnt  a  wire 
could  ho  used  for  double  transmission,  nnd  that  by  an  ar¬ 
rangement  of  different  forces  of  battery  two  messages  could 
be  sent  at  the  snino  time  for  nil  practical  purposes  over  the 
sumo  wire,  nnd  this  defendant  sot  himself  to  work  in  his 
little  shop  for  tho  purpose  of  developing,  improving,  nnd 
reducing  to  practical  results  hy  machinery,  these  ideas,  ns 
well  ns  prosecuting  his  experiments  in  Printing  Telegraphs 
or  recording  tho  signals  automatically  on  paper. 

And  this  defendant  further  snys,  that  leaving  for  a  timo 
the  furthor  immediate  development  of  Duplex  Machines, 
he  dovoted  himself  moro  particularly  to  the  invention  nnd 
perfecting  of  machinery  for  automatic  telegraphy,  and  ob¬ 
tained  his  first  patent  for  such  a  machine,  which  resulted 
in  the  improvements  in  tho  automatic  machines  now  so 
lnrgoly  used  hy  bankers  nnd  others,  for  which  improve- 


incuts  lie  obtained  a  largo  number  of  patents,  but  at  the. 
samo  time  lie  was  engaged  from  time  to  time  in  experiment¬ 
ing  upon  tlio  idea  of  duplex  telegraphy. 

And  this  defendant,  further  answering,  says  that  in 
September,  1870,  being  desirous  of  continuing  Ins  experi¬ 
ments  in  duplex  telegraphy,  and  also  of  having  the 
menUB  of  manufacturing  and  perfecting  his  machines  for 
automatic  telegraphy,  and  having  at  that  time  the  com¬ 
mand  of  very  limited  means  for  tlioso  purposes,  lie  entered 
into  a  written  contract  with  George  Harrington,  made  and 
executed  on  the  ilrst  day  of  October,  1870,  a  copy  of  which 
contract  is  hereto  annexed  and  marked  Schedule  1,  by  which 
it  was  agreed  that  the  said  George  Harrington  and  this  de¬ 
fendant  should  go  into  a  joint  business  or  partnership,  to 
continue  for  the  term  of  live  yenrs,  upon  the  terms  and  con- 
ditioiiB  set  forth  in  tlio  said  contract,  which  partnership  or 
joint  business  was  to  be  for  the  invention  and  manufacture 
of  all  kinds  of  machinery,  instruments,  tools,  battery  ma. 
tcrinls,  and  all  that  should  be  required  by  tlio  various  sys¬ 
tems  of  telegraphy,  and  in  which  this  defendant  and  the 
said  George  Harrington  wore  to  be  iutorcsted  as  joint 
owners  ill  all  original  inventions  and  improvements  in¬ 
vented.  purchased  or  obtained  by  them  or  cither  of  them, 
ami  in  all  interests  and  profits  arising  therefrom  in  the 
proportions'  set  forth  in  said  contract,  us  by  reference  to 
the  same  will  more  fully  appear,  excepting,  however,  the 
automatic  reporting  machine  used  by  stockbrokers,  which 
had  been  previously  sold  by  this  defendant. 

And  tins  defendant  further  says  that  by  that  contract 
1m  bucumc  bound  to  devoto  all  liis  inventive  powers  and 
talents  to  the  business  and  interests  of  said  firm,  anil  to 
admit  no  other  parties  to  any  direct  or  indirect  interest  in 
or  to  any  inventions  or  improvements  made  or  to  bo  made 
by  him,  except  as  sot  forth  ill  said  contract,  but  that  all 
such  should  inure  and  bolong  to  this  defendant  and  tlio 
said  Harrington  in  the  proportions  thcrciu  provided,  and 
not  to  invent  or  transfer  to  any  other  parties  any  improve¬ 
ment  that  would  bo  usofnl  or  desired  in  automatic  tele¬ 


graphy  ;  and  by  said  contract  it  was  provided  that  lor  an; 
original  inventions  and  improvements  made  by  this  do 
Iciidant  other  than  such  ns  might  ho  suggested  or  nrisi 
from  the  current  work,  this  defendant  should  be  paid  hi 
the  firm  additional  compensation,  to  ho  adjusted  in  tin 
manner  pointed  out  in  said  contract. 

And  this  defendant,  further  nnsworiug,  says  that  nude 
said  contract  the  said  joint  business  was  begun  and  carrici 
on  in  the  city  of  Xownrk,  in  this  State,  and  machinery  am 
a  shop  were  provided,  and  n  lnrgo  amount  of  money  ox 
pended  by  the  said  Gcorgo  Harrington  in  order  to  earn 
out  the  purposes  of  said  partnership,  and  this  dcfemlan 
wont  on  to  perfect  his  inventions  in  printing  and  automata 
telegraphy  and  other  machines  and  devices,  and  whatove 
else  might  grow  out  of  such  experiments. 

And  this  defendant,  further  answering,  says  that  al 
though  the  said  partnership  business  wns  not  pecuniarily 
successful  ns  a  manufacturing  operation,  the  ] 
part  of  the  business  wns  successful,  and  a  large  number  o 
patents  were  obtained  for  various  devices  and  improve¬ 
ments  relative  to  lmtchiiicry  for  utilizing  the  action  o 
electricity,  which  were  directed  to  bo  issued  to  the  sail 
Harrington  and  this  defendant  jointly  under  said  contract 
ns  they  were  perfected. 

And  this  defendant,  further  answering,  says  that  ii 
order  to  promote  unity  of  action  in  regard  to  tho  said  busi 
ness  mid  the  disposition  of  any  inventions  and  improve 
incuts  made  or  to  bo  made  by  this  defendant,  for  the  join 
benefit  of  himself  and  said  Harrington,  this  dcfemlan 
entered  into  a  further  agreement  in  writing  with  tho  sail 
Harrington,  on  tho  fourth  day  of  April,  1871,  a  copy  o 
which  is  hereto  annexed  and  marked  Schedule  2,  by  wind 
it  was  recited  that  this  defendant  had  agreed  to  invent  am 
construct  instruments  and  machinery  that  should  dovelo] 
into  practical  use  the  Littlo  or  other  system  of  automata 
or  fast  system  of  telegraphy,  and  to  improve  and  porfoc 
such  instruments  and  machinery  by  adding  thereto  iron 
time  to  time  such  further  inventions  ns  experience  and  hi 


lility  ns  nil  inventor  nnd  electrician  should  suggest,  and 
ropiiro  drawings  and  obtain  patents  I'or all  such  inventions, 
hich  woro  to  be  tlio  joint  property  of  said  Harrington  and 
lis  defendant,  nnd  such  patents  to  bo  issued  to  them 
,i„tly  in  tlio  proportion  of  two-thirds  to  said  Harrington 
nd  one-third  to  this  defendant,  and  the  whole  to  he  under 
,o  solo  control  of  said  Harrington,  with  power  to  sell  and 
isposo  of  the  same  ;  nnd  also  that  the  said  Harrington  had 
uthfully  fulfilled  all  of  his  covonnnts  lind  stipulations  cn- 
jred  into  witli  this  defendant.  And  after  such  recitals, 
liis  defendant  did,  by  said  contract,  assign  and  set  over  to 
aid  Harrington  two-thirds  in  interest  of  all  his  said  invon- 
ious  nnd  of  all  patents,  whothor  issued  or  applied  for  or 
hereafter  lo  be  applied  for,  and  ot  nil  patents  nuulo  or  to 
io  made  applicable  to  automatic  tolegrnpby  or  mechanical 
irinting,  and  did  constitute  tlio  said  Harrington  his  true 
md  lawful  attorney  irrevocable  lo  sell,  transfer,  and  con¬ 
vey  all  of  tlio  rights,  titles,  and  interest  of  this  defendant 
n  and  to  all  nnd  every  of  his  said  inventions  nnd  improvc- 
ncuts,  whethor  made  or  to  lie  made,  and  to  sell  and  trnns- 
er  nil  rights  by  patent  or  otherwise  arising  therefrom 
ilrondy  made  or  to  lie  made,  with  full  power  to  divest  this 
lefciidaiit  of  all  such  rights,  and  requesting  the  commis¬ 
sioner  of  patents  to  recognize  said  Harrington  as  such 
ittorncy,  ns  by  tlio  said  contract, -a  copy  whereof  is  hereto 
innexed,  will  more  fully  nppear.  Which  contract  was  duly 
recorded  in  the  Patent  Ofiico  on  tho  sixth  day  of  May, 
1871,  in  Book  U  13  of  Transfers  of  Patents,  page  412. 

And  this  defendant,  further  answering,  says  thnt  under 
the  foregoing  agreements  with  said  Harrington  ho  con¬ 
tinued  to  pursue  such  joint  business  in  tho  city  of  Newark, 
and  tlio  said  Harrington  continued  to  furnish  largo 
amounts  of  money  to  conduct  tho  samo,  nnd  this  defendant 
still  prosecuted  his  experiments  in  duplex  telegraphy,  and 
during  such  experiments  conceived  the  idea  of  quadruples 
telegraphy,  but  at  first  with  doubtful  success.  And  in 
January,  1873,  having  made  sovornl  duplex  machines  nnd 
ono  quadruples  mnehino,  it  boenmo  convenient  to  ltnvo  an 


opportunity  of  .testing  thorn  upon  extended  circuits,  nnd 
this  defendant  thereupon  applied  to  William  Orton,  Presi¬ 
dent  of  tho  Western  Union  'Telegraph  Company, ‘for  leave 
to  put  his  machines  upon  the  wires  of  thnt  company  when 
not  in  uso  between  twelve  o’clock  at  night  and  seven  in 
tho  morning,  which  was  granted  by  said  Orton,  who  said 
that  ho  would  bo  glad  to  have  any  machine  developed 
which  would  promote  rapidity  in  telegraphing.  And  under 
thnt  permission  this  dcfamlant  worked  for  nbout  ono  hun¬ 
dred  nights,  nnd  developed  tho  operation  of  the  duplex 
inacliiiio  until  ho  beliovcd  it  a  success,  and  so  for  developed 
the  qundruplex  machines  that  by  further  experiments  they 
could  bo  made  successful. 

And  this  defendant  further  says,  thnt  ho  then  appliod  to 
Mr.  Orton  to  have  his  Duplox  machines  put  on  tlio  wires  ol 
tho  Western  Union  Telegraph  Company  for  use,  nnd  al¬ 
though  ho  expressed  a  willingness  to  lmvo  it  dono,  lie  gave 
no  orders  for  thnt  purpose,  and  tins  defendant  found  him¬ 
self  iinublo  to  effect  it,  and  received  no  reply  to  a  lettei 
written  to  Mr.  Orton  on  tho  subject,  just  before  lie  wni 
abent  to  sail  for  Europe,  so  that  tins  defendant  was  lefl 
without  nny  means  of  testing  his  machines  by  practical 
use. 

And  this  defendant  further  answering,  says,  that  undoi 
these  circumstnuccs,  having  no  access  to  extended  circuits 
ho  applied  to  George  B.  Prescott,  tho  other  defendant  tc 
this  suit,  who  was  then  the  olcctricinn  of  tlio  Western  Union 
Telegraph  Company,  nnd  stated  his  difficulty  to  him,  nnd 
asked  hiBiiid  in  hnving  tho  Duplox  instruments  put  to  work 
on  the  Western  Union  lines;  nnd  to  induce  him  to  lend  bit 
assistance,  this  defendant  offered  to  givo  him  a  half  interest 
in  said  inventions  if  ho  would  do  so,  and  the  said  Prescott 
agreed  to  aid  this  defendant  in  that  particular  on  conditioi 
thnt  he  tho  said  Prescott  should  appear  to  bo  joint  in 
vontor,  with  this  defendant,  of  tlieso  instruments,  to  wind 
suggestion  this  dofohdnnt  tbit  constrained  to  assent,  nlthougl 
said  Prescott  had  then  dono  nothing  towards  Bind  iuvon- 


And  in  ptll'simnco  of  such  proposition,  a  contract  was 
entered  into  between  this  defendant  mid  tho  said  Prescott, 
dated  July  9, 1874,  which  is  not  alluded  to  in  tho  com¬ 
plainant’s  bill,  and  a  copy  of  which  is  hereto  annexed,  • 
marked  Schedule  3,  by  which  it  was  recited  that  this  de¬ 
fendant  and  said  Prescott  wore  joint  inventors  of  certain 
improvements  in  telegraphic  apparatus  described  as  mag¬ 
netic  Duplex  apparatus,  for  which  they  wero  about  to  apply 
for  letters  patent  to  bo  issued  to  them  jointly,  and  by  which 
die  said  inventions  and  improvements  were  described  ns  their 
joint  inventions ;  and  it  was  agreed  that  they  should  have 
i  joint  mid  ct|nnl  interest  in  the  same,  upon  tho  terms  nnd 
conditions  therein  set,  forth  as  by  the  snid  agreement,  a 
:opy  of  which  is  hereto  annexed,  will  more  fully  appenr, 
md  which  terms  and  conditions  are  substantially  the  same 
is  those  contained  in  tho  subsequent  agreement  hereinafter 
nentioned. 

And  this  defendant  further  miewcriug,  says,  upon  tak- 
ng  advice  as  to  the  legality  of  any  patents  that  should  be 
ssued  to  this  defendant  nnd  said  Prescott  jointly,  ho  be¬ 
anie  satisfied  that  inasmuch  as  tho  said  Prescott  was  not 
n  fact  a  joint  inventor  with  this  defendant,  the  said  patents 
vould  be  deemed  invalid  ;  and  he  thereupon  conn  mini- 
sited  his  doubts  to  said  Prescott,  nnd  it  was  thought  best 
o  make  other  arrangements.  And  thereupon  on  tho  nine- 
centli  day  of  August,  1874,  a  new  agreement  was  made, 
nbstnntinlly  ns  set  forth  in  the  said  bill  of  complaint, 
eeiting  that  the  inventions  were  made  by  this  defendant 
done,  nnd  providing  for  tho  joint  ownership  thereof  upon 
he  terms  nnd  conditions  sot  forth  in  snid  agreement  and 
nbstnntinlly  recited  in  said  bill. 

And  this  defendant  further  says,  that  tho  latter  ugree- 
iiout  was  merely  substituted  for  tho  former  one,  nnd  this 
lefeudnnt  did  not  receive  from  snid  Prescott  or  from  the 
omplniimnt  or  nny  other  person  any  other  or  further  con- 
idorntion  therefor. 

And  this  defendant  further  soys,  that  in  conscqucnco  of 


this  ngreomont  ho  was  permitted  to  put  his  machines  upon 
tho  Western  Union  wires,  and  to  put  them  at  work. 

And  this  defendant  further  says,  that  during  theso  ne¬ 
gotiations  lie  had  told  the  said  Prescott  of  his  Qnndruplcx 
apparatus  nnd  explained  its  operation,  showing  him  that  it 

would  he  ninuli . re  rapid  nnd  eilieanious  than  the  Duplex, 

nnd  snid  Prescott  urged  this  defendant  to  lest,  tho  Qiindru- 
plex  nppnrnlue,  which  lie  proceeded  to  do,  nnd  had  it  put 
upon  tho  lino  formed  of  a  return  circuit  between  Now  York 
and  Philadelphia,  mid  worked  it  nil  of  one  day  in  the  pres¬ 
ence  of  snid  Prescott  anil  Mr.  Orton,  until  it  was  consid¬ 
ered  so  far  successful  ns  to  cause  Mr.  Orton  to  order  n  now 
set  of  instruments  to  lie  put  on  the  line  between  Now  York 
and  Boston,  nnd  to  lie  worked  in  the  actual  business  of 


And  this  defendant  1  I  i 

invention  proved  to  lie  a  success,  after 
four  weeks,  nml  tho  said  Orton  desired 
operation  on  a  longer  circuit,  nnd  in 
defendant  caused  the  instrument  use 


ing  says,  that  tho 
working  three  or 
o  have  it  put  in 
his  request  this 
on  the  Boston 


line  to  ho  transferred  to  the  Chicago  wire,  whore  it  was 
used  successfully,  nnd  the  machines  have  been  working  on 
that  line  ever  since  in  the  service  of  tho  Western  Union 
Telegraph  Company,  except  while  changing  into  their  now 
building  in  New  York. 

And  this  defendant  further  says,  that  during  all  this 
time  the  snid  Prescott  had  paid  him  nothing  fur  snid  in¬ 
ventions,  nnd  had  done  nothing  personally  about  them, 
except  to  pay  some  solicitor’s  fees,  nnd  for  some  machines ; 
and  that  after  the  invention  was  found  to  bo  a  success,  the 
said  Prescott  consulted  this  defendant  ns  to  what  proposi- 
:  tion  should  lie  made  to  tho  Western  Union  Telegraph 
Company  for  the  sale  of  it  to  them,  no  proposition  having 
been  mndo  by  snid  company  up  to  that  time  as  to  a  price 
to  be  paid  for  it;  ami  thereupon  this  defendant  drew  up  a 
memorandum,  nnd  afterwards  a  proposition  was  made  out 
and  signed  by  this  dofondnnt  and  said  Prescott,  ns  follows, 


‘lion.  Wm.  Oirrox,  President  Western  Union  Telegraph 
Company. 

“  Dear  Sir:  Your  company  lms  over  25,000  miles  ot 
wire  which  can  now  he  profitably  qundrnplexed.  Consul- 
orinjr  these  25,000  miles  to  lie  already  duplexed,  the  quad- 
ruplox  will  create  50,000  miles  additional.  For  all  out 
patents  and  efi'orts  in  protecting  the  company  in  tho  mo¬ 
nopoly  of  the  same  during  their  life,  we  will  take  one- 
twentieth  of  the  average  cost  of  maintenance  of  50,000 
mil6s  of  wire  for  seventeen  years — ono-.third  down,  ami 
the  balance  in  yearly  payments  during  the  above-mentioned 
period,  lmlf  of  such  payments  to  cease  the  moment  any 
other  person  shall  invent  and  put  into  practical  operation 
a  quudruplex  not  infringing  our  patents,  upon  a  circuit  ol 
400  miles  in  length. 


And  this  defendant  further  says,  that  tho  uliovo  propo¬ 
sition  is  the  only  formal  one  that  wns  made,  and  it  was  not 
accepted  hy  the  company ;  and  this  defendant  being  then 
greatly  in  want  of  money,  submitted  other  unsigned  mem¬ 
oranda  of  lower  rates  to  Mr.  Orton,  who  accepted  none  »l 
them,  hut  urged  this  defendant  to  oiler  still  lower  proposi¬ 
tions;  and  these  memoranda  of  lower  rates  wore  not  signed 
hy  said  Prescott,  nnd  woro  only  suggested  by  this  defend¬ 
ant  hecauso  ho  wns  in  urgent  need  of  money. 

•  And  this  defendant  further  says  that  in  his  Inst  negoti¬ 
ation  with  Mr.  Orton  ho  informally  proposed  to  take 
twenty-iivo  thousand  dollars  nnd  a  royalty  instead  of  the 
Kret  proposition,  which  would  hnvo  amounted  to  four  hun¬ 
dred  nnd  fifty  thousand  dollars. 

And  this  defendant,  further  answering,  says  that  it  ii 
truo  that  ho  received  from  tho  said  complainant  tho  sum  ol 
live  thousand  dollars  on  tho  tenth  day  of  December,  1874, 
aud  hofore  any  of  tho  above-mentioned  propositions  wen 


receipt,  marked  inhibit  A,  annexed  to  the  complnimu 
bill,  which  wus  prepared  for  him  to  sign,  and  falsely  reel 
that  this  defendant  and  said  Prescott  are  the  joint  invent 
of  said  improvements,  but  this  defendant  denies  that  lie 
reived  said  sum  in  consideration  of  any  agreement  then 
fore  made  with  ’said  company  for  the  sale  of  said  invuntio 
or  that  the  same  was  paid  in  execution  of  any  such  agi 
meat,  hut  this  dofcmluut  says  that  he  then  needed  mon 
nnd  being  satisfied  that  his  experiments  wero  successful,  i 
supposing  that  some  satisfactory  arrangement  would 
mndo  for  the  sale  of  his  improvements  to  thu  complaint 
lie  applied  to  Mr.  Orton  for  some  money,  and  received 
said  sum  of  five  thousand  dollars,  and  gave  him  the  root 
marked  Exhibit  A  in  complainant’s  hill,  which  recites  t 
this  defendant  and  said  Prescott  had  agreed  to  assign  tl 
right,  title  and  interest  in  said  inventions  to  the  said  e 
puny,  provided  the  terms  of  payment  for  such  assigmn 
should  he  satisfactorily  adjusted  between  said  parties 
the  said  company. 

And  this  dclcndunt.  lurther  answering,  says  that 
terms  of  payment  for  such  assignment  were  never  ndjut 
in  a  manner  satisfactory  to  this  defendant;  that  non 
the  said  propositions  or  memoranda  were  accepted  hy 
said  complainant  in  any  reasonable  time ;  that  this  deft 
ant  needed  more  money  in  order  to  finish- some  twe 
(pmdriiplcx  machines  ordered  hy  Mr.  Orton,  nnd  in  oi 
to  procuro  thu  same  ho  repeatedly  called  upon  said  Oi 
and  desired  him  to  close  up  the  negotiation,  hut  was  i 
Bluntly  put  oft’  and  treated  with  coldness  and  iudiflerc 
and  finully  said  Orton  went  to  Chicago,  leaving  this  del 
ant  in  his  difficulties,  with  a  largo  number  of  hands 
ployed  and  no  meuns  of  paying  them,  and  also  embarrassed 
hy  the  agreement  ho  had  been  induced  to  uiako  with  said 
Prescott 

And  this  defendant  further  says  that  under  these  cir¬ 
cumstances  he  determined  to  make  tho  best  salo  of  his  iu- 
;  volitions  that  ho  could  command,  being  satisfied  that  the 


that  Find  Prescott,  ns  an  employee1  of  tho  com  plain  u  1 1 1,  lit 
only  token  hold  of  the  mutter  to  obtain  nn  interest  in  tl 
inventions  without  considerntion,  and  to  put  this  defends! 
entirely  in  the  power  of  the  Western  Union  Telegraph  Con 
pnny.  And  thereupon  this  defendant  sold  and  transferre 
all  his  right,  title  and  interest  in  said  inventions  and  paten 
to  Jay  Gould,  in  behalf  of  the  Atlantic  and  Pnciiie  'J’elcgrnp 
Company,  before  any  acceptance  of  any  proposition  orsii] 
gostion  for  sale  on  the  part  of  the  complainant,  and  prii 
to  the  filing  of  the  bill  in  this  cause,  so  that  it  is  no 
entirely  out  of  the  power  of  this  defendant  to  enter  ini 
any  further  negotiation  with  the  complainant  or  to  iiuik 
any  transfer  or  assignment  to  the  Western  Union  Tolcgrnp 
Company. 

And  this  defendant,  further  answering,  says  that  th 
said  William  Orton  and  George  B.  Prescott,  at  the  time  t 
the  dculiiigs  of  this  defendant  with  them  ns  above  set  forth 
were  fully  aware  that  this  defendant,  by  virtue  of  the  sail 
agreements  with  George  Harrington,  mndo  in  1ST0  am 
18il,  had  been  continuously  engaged  in  experiments  ii 
electric  telegraphy,  as  hereinbefore  stated,  and  in  obtain 
ing  patents  for  such  of  his  inventions  as  were  found  to  hi 
important  and  patentable,  and  that  the  said  Orton  bad  fill 
notice  thereof  before  ho  paid  this  defendant  the  said  sum  o 
live  thousand  dollars,  and  the  said  Prescott  also  before  la 
entered  into  said  contract  of  August  19th,  1874. 

And  this  defendant  further  answoriug  says,  that  whei 
lie  entered  into  said  last  mentioned  contract  with  sail 
Prescott,  and  when  lie  gave  the  receipt  for  five  thousnne 
dollars,  ho  believed  that  the  deed  of  assignment  made  b; 
him  to  Harrington,  on  the  fourth' day  of  April,  1871,  dh 
not  by  its  terms  embrace  the  invention  of  the  Duplex  am 
Quadruples  systems  j  and  ho  acted  oii  that  opinion  in  all 
bis  dealings  with  said  Orton  and  Prescott,  and  assumed  it 
;ood  faith,  that  the  snid  George  Harrington  had  no  riglil 
tr  interest  in  the  snid  invention,  or  iu  any  of  the  pntonti 
ibtained  or  applied  for  in  rospeet  to  such  inventions,  ami 


agreements  made  with  snid  Harrington. 

That  among  such  patents,  and  part  of  the  rositl 
this  defendant’s  labors  were  a  patent  dated  Novcmbc 
1874,  for  a  Duplex  Telegraph,  the  application  for  v 
was  filed  in  1878,  or  early  in-  1874,  and  a  paten 
improvements  iu  Duplux  Telegraphy  issued  May, ! 
upon  an  application  tiled  April,  1S73,  which  at  the  tii 
his  dealings  with  Orton  and  Prescott,  this  defendant 
supposed  to  be  not  included  in  the  snid  contracts 
Harrington. 

And  this  dulundnnt  further  says,  tlint  the  said  Gi 
Harrington,  tlio  partner  of  this  defendant  ns  above 
tioned,  was  absent  at  tlio  time  when  this  defendant  uni 
into  his  arrangements  with  said  Prescott,  and  on  his  rc 
at  once  objected  to  tlio  same,  and  insisted  tlint  said  Prc 
was  not  in  any  milliner  the  joint  inventor  of  said  impi 
incuts,  and  tliat  ho  tlio  said  Harrington  wns.jointh 
forested  in  the  same,  and  held  control  thereof,  by  virti 
the  contracts  of  this  defendant,  made  with  him  us  he 
before  set  forth,  and  the  said  Harrington  never  m 
manner  assented  to  any  propositions  ii  mg  Inti  n 
the  salu  thereof  to  the  complainant,  but  on  the  coni 
himself  negotiated  and  carried  into  cflcct,  a  sale  tlicrci 
Jay  Gould,  iu  behalf  of  the  Atlantic  ami  Pueific  Tcleg 
Company,  on  the  first  dny  of  January,  1S75,  under 
provisions  of  the  snid  recorded  assignment  and  agrcei 
made  to  him  by  this  defendant  as  hereinbefore  set  Ii 
And  the  snid  Harrington  also  assented  to.  and  ratified 
and  sale  made  by  this  defendant  to  Jay  Gould  as  nforei 
and  took  measures  to  protect  his  own  interests  in  rej 
to  said  inventions  ns  bo  was  advised. 

And  this  defendant  further  answering  says,  that  slu 
liter  bo  rccoivcd  tlio  snid  $5,000,  lie  became  satislicil, 
ivns  advised  tlint  nndor  bis  former  contracts  with 
Harrington,  u  share  of  snid  inventions  of  right  beloi 
to  him,  beenuso  thoy  wero  the  result  and  perfeotio 
«  peri  incuts  made  before  tho  snid  partnership  arrange 


with  him  Itiul  been  m ndo,  nnd  properly  passed  by  tin 
transfers  made  to  him  by  this  defendant,  and  therefor, 
this  defendant  on  the  twenty-third  day  of  .Tannery,  lS.o 
addressed  a  communication  to  tiio  Commissioner  of  Patents 
advising  him  of  the  contracts  made  with  said  Harrington 
and  of  ids  claim  under  the  same,  and  withdrawing  ill 
ropiest  theretofore  made  for  the  issue  of  the  patents,  ii 
the  name  of  tills  defendant  and  said  Prescott,  and  ropiesl 
ill"  that  the  same  lie  issued  to  said  Harrington  and  tin 
defendant  in  tliu  proportions  set  forth  in  tho  power  c 
attorney  and  assignment  dated  April  T,  1871,  and  tli 
contract  thorcin  recited.  And  this  defendant  also,  on  tli 
twenty-third  day  of  January,  1875,  prepared  and  signet 
and  a  few  days  thereafter  addressed  and  sent  to  sai 
William  Orton,  ns  President  of  Tho  Western  Union  Teli 
graph  Company,  a  communication  stating  that  when  ncgi 
tintions  were  opened  between  him  nnd  this  defendant,  th 
defendant  hoped,  in  ease  tiio  terms  could  bo  agreed  npoi 
that  lie  should  lie  atilu  to  give  a  valid  title,  but  that  1 
was  advised  that  the  claims  ol  George  Harrington,  nnd 
a  prior  contract  and  irrevocable,  power  of  attorney  ( 
which  said  William  Orton  was  aware),  and  which  we 
still  ill  full  force  and  effect,  would  prevent  a  valid  transt 
of  snd i  title  to  thu  complainant  or  other  parties,  and  th 
under  such  circumstances  all  further  negotiations  butwe 
them  must  necessarily  cease,  and  that  any  money  expen 
ed  or  paid  in  anticipation  of  final  action,  this  defends 
was  ready  at  any  moment  to  return  to  said  Orton.  A 
that  at  the  same  time  this  defendant  i  t 
to  said  Prescott,  inclosing  a  copy  of  said  letter  to  Willii 
Orton,  President,  and  informing  him  that  tho  same  reuse 
which  forbade  further  action  with  snid  Orton  would 
validntu  the  agreements  made  with  said  Prescott,  a 
offering  to  return  any  moneys  expended  by  said  Prescott 
account  of  this  defendant's  negotiations  with  him  at  r 

And  this  defendant  further  says,  that  he  lias  at  all  th 
since  been  willing  and  is  still  willing  and  ready  to  rot 


tho  said  money  to  snid  William  Orton,  and  hereby  tend 
himself  ready  to  do  so. 

And  this  defendant  further  nnsworing,  says,  that  ho 
advised  nnd  boliovos  that  the  said  Harrington  or 
assignees  are  entitled  to  have  tho  snid  inventions  of  Hup 
nnd  Qtindruplcx  Telegraphy  brought  within  tho  oporati 
of  the  contracts  nindo  with  said  Harrington  by  t 
defendant  ns  nforesnid ;  that  the  snid  Harrington  nnd  tin 
interested  with  him  have,  since  tho  .late  of  tlm  said  fi 
agreement  with  this  defendant,  expended  a  very  largo  si 
of  money,  amounting  to  about  four  hundred  thousand  d 
lars,  in  furnishing  menus  and  facilities  for  this  defendant 
carry  on  his  experiments  and  perfect  his  inventions  in  t 
various  branches  of  telegraphy,  including  his  improvomei 
in  Duplex  and  Qiindruplex  machinery,  and  by  means 
mch  expenditure  have  enabled  this  defendant  to  secure  t 
mcccssful  results  hereinbefore  mentioned.  And  the  sii 
Harrington  nnd  his  assignees  now  justly  claim  that  all 
mch  results  are  properly  within  the  scope  of  the  terms 
the  snid  agreement,  nnd  are  subject  to  their  control  by  t 
erms  of  tho  agreement  nnd  assignment  of  the  fourth  d 
)f  April,  1871.  By  reason  of  which  claims  on  the  part 
;nid  Harrington  nnd  his  assignees,  this  defendant  hum 
hat  ho  ought  not  to  lie  decreed  to  make  any  com  cyan 
>r  transfer  of  the  said  patents  to  the  said  complainant 
lerogation  of  the  rights,  so  claimed. 

And  this  dclondnut  lurthcr  answerin''-  s«vs,  that  tl 
legotiations  between  this  defendant  nnd  said  complniun 
aid  George  B.  Prescott  were  all  founded  upon  a  mistnki 
dew  of  the  legal  rights  of  snid  .Harrington,  which  mistnl 
rns  mutual— both  parties  supposing  that  the  contract 
kpril  4,  1871,  was  so  worded  as  to  oxcludc  the  Dupli 
md  Qiindruplex  systems.  But  this  defendant  says,  that  1 
s  now  ndvised  nnd  believes  that  tho  said  contract  of  A  pi 
I,  1871,  docs,  in  fact,  include  tho  Duplex  nnd  Quadr 
ilex  systems,  and  that  theso  inventions  are  also  umbrae. 
>y  tho  said  contract  of  October  1,  1870. 

And  tliis  defendant  further  nnsworing,  says,  that  lie  d 


irics  tlmt  wlmt  is  called  in  tlio  complainant's  bill  atormal 
proposition  in  writing,”  was  in  any  sense  a  formal  propo¬ 
sition,  but  alleges  tlmt  it  was  a  mere  memorandum  of  torms, 
loose,  vague,  and  indefinite,  not  signed  by  tins  defendant, 
and  never  acted  on  by  said  Orton  while  it  wns  open  for 
consideration;  and  this  dofondnnt  donies  tlmt  it  wns  left 
open  indefinitely  in  point  of  time. 

And  this  defendant  further  answering,  says,  tlmt  the 
said  Orton  took  no  notieo  of  said  memorandum  until  after 
lie  bad  learned  that  this  defendant  laid  withdrawn  alto¬ 
gether  from  the  attempted  negotiation. 

And  this  defendant  denies  that  the  transaction  carried 
on  between  this  defendant  and  said  Orton  and  Prescott 
constituted  a  contract,  and  charges  that  there  lias  been  no 
tender  to  this  defendant  of  a  contract  in  writing  for  tin 
transfer  of  the  inventions  to  the  complainant,  and  for  tin 
payment  by  the  complainant  of  the  price  or  consideration 
and  no  tender  of  any  instrument  of  transfer  nor  of  any 
covenant  to  pay  any' royalty. 

And  this  defendant  further  says,  that  on  the  thirtccntl 
day  of  October,  ISM,, a  notieo  wns  sent  to  the  complninnn 
by  Mr.  1  Ionium,  solicitor  for  the  coinplninants  in  a  sni 
pending  between  Craig  nnd  another  against  The  Automata 
Telegraph  Company  nnd  others,  advising  the  complninnn 
tlmt  this  defendant  Imd  assigned  his  inventions- to  said  liar 
rington,  and  that  a  copy  of  the  complaint  in  that  enso  wn 
sent  with  such  notice,  whereby  the  complainant  was  full; 
advised  of  the  rights  and  claims  of  snid  Harrington  in  rt 
spect-  to  the  inventions  ol  this  dcteiidaut.  And  this  di 
fondant  charges  nnd  insists  that  tlio  snid  complainant  cm 
not  in  equity  require  this  dcfcmlnnt  to  do  any  net  to  intei 
fere  with  the  rights  of  said  Ilnrrington  ns  claimed  by  hii 
under  said  contracts. 

And  this  defendant  donies  all  unlawful  combination  an 
confederacy  in  snid  hill  charged.  Without  this  that  nn 
other  matter  or  tliinir  in  tho  snid  hill  charged,  nnd  n< 


and  avoided,  traversed  or  denied,  is  truo  to  tho  knowledge 
or  beliof  of  this  defendant.  ’ 

All  which  matters  and  things  this  defendant  is  ready 
to  nvor,  maintain  nnd  prove  ns  this  honorable  court  shall 
direct,  and  humbly  prays  to  he  lienee  dismissed  with  his 
costs  ami  charges  in  this  behalf  sustained. 

PA  UK  Ell  *  KEASI1KV, 
.SWV.V ,(!  of  Counsel  ,0,7 h  defendant, 
Thomas  A.  Emso.v. 

State  of  New  Jersey,  Essex  County,  ss. : 

Thomas  A.  Edison,  the  above  named  defendant,  being 
duly  sworn,  on  his  ontli  snith,  tlmt  the  matters  and  thing's 
set  forth  in  the  foregoing  answer,  so  far  as  they  rclnto  to 
his  own  acts,  are  true,  ami  so  far  as  they  relate  to  the  acts 
of  others  he  bolioves  them  to  he  true. 

Til  OS.  A  EDISON. 

Sworn  and  subscribed  this  20th  ) 
day  of  May,  1875,  before  me. j 
E.  Q.  ICuAsnnv, 


18 


[Schedule  1.] 

Tins  indenture,  made  this  first  day  of  October,  ono  tlion- 
sand  eight  hundred  and  seventy,  by  and  between  Tliomns 
A.  Edison,  of  Newark,  in  tlio  Stnto  of  New  Jersoy,  of  the 
first  part,  and  George  Harrington,  of  the  city  of  Washing¬ 
ton,  District  of  Columbia,  of  tho  second  part : 

Witncssetli,  that  for  and  in  consideration  of  ono  dollnr 
paid  in  band,  one  to  the  other,  the  receipt  whereof  is  here¬ 
by  acknowledged,  and  of  tho  mutual  trust  and  confldcnco 
which  said  parties  have  in  each  other,  do  each  covenant 
and  agree  with  the  other  ns  follows : 

First.  That  tho  said  parties  as  nbovo  named  will  be 
partners  ns  inventors  and  as  manufacturers  of  all  kinds  of 
machinery,  instruments,  tools,  battery  inatcrinls,  and  all 
and  whatsoever  may  be  required  by  tho  vnrions  systoles  of 
telegraphy,  and  of  all  such  other  machinery,  instruments, 
toolB,  or  articles  or  things  the  mauutacturo  of  which  may 
bo  offered  to  or  obtained  and  accepted  by  them,  tho 
said  parties  to  be  interested  ns  owners  in  nil  originul 
inventions  and  improvements  invented,  purchased,  or  ob¬ 
tained  by  them,  or  cither  of  them,  and  in  all  tho  in¬ 
terests  nml  profits  arising  from  the  business  of  mnnu- 
lncturmg  m  the  proportions  nB  hereinafter  set  forth. 

Second.  That  the  business  of  said  firm  shall  bo  known 
and  conducted  under  tho  name  and  style  of  TnR  Amemoan 
Telequatu  Wouks. 

Third.  The  place  of  manufacture  shall  bo  in  tho  city  of 
Newark,  Stnto  of  New  Jersey,  until  such  time  nB  it  may  bo 
mutually  agreed  to  select  somo  other  locality. 


19 

Fourth.  The  capital  of  tho  firm  shall  bo  nine  thousand 
($9,000)  dollars,  of  which  tho  party  of  the  first  part  shall  fur¬ 
nish  the  sum  of  three  thousand  ($3,000)  dollars  in  the  inan- 
norhorcin  set  forth,  and  the  party  of  the  second  part  shall 
furnish  tho  sum  of  six  thousand  ($0,000)  dollars  in  cash. 

Tho  capital  to  ho  furnished  by  the  party  of  tho  second 
part  shall  consist  of  tho  stock,  machinery,  tools  and  inven¬ 
tions  owned  wholly  or  in  part  by  him,  of  which  an 
invontory  shall  bo  made  without  reservation  ;  but  so  much 
of  the  stock,  machinery,  tools,  and  fixtures  partly  owned 
by  said  party  of  tho  first  part,  and  in  part  owned  by  one 
William  Unger,  as  aro  now  located  and  in  use  nt  the 
former  plnco  of  business,  at  number  filteen  (in)  Railroad 
avenue,  Newark,  Now  Jersey,  shall  be  allowed  to  remain 
there  for  uso  by  tho  parties  hereto,  and  the  snid  William 
Ungor,  under  tho  unexpired  partnership  us  existing  at  this 
date  between  Edison,  party  of  tho  first  part,  and  tho  snid 
William  Unger,  hut  snid  shop,  machinery,'  tools,  and  fix¬ 
tures,  known  ns  number  fifteen  (15)  Railroad  avenue,  shall 
not  he  uScd  ns  n  plnce  of  general  manufacture  upon  orders 
to  tho  detriment  of  tho  interests  of  the  manufactory  to  bo 
established  und  known  as  the  American  Telegraph  Works, 
under  tho  auspices  of  and  to  lie  owned  by  the  parties  to  this 
indenture,  it  being  understood  and  stipulated  that  the 
gcnoral  manufacture  ns  hcrctnforu  carried  on  is  to  be 
transferred  to  the  American  Telegraph  Works,  to  bo 
established  under  this  ngreoment.  And  tho  transfer  of  tho 
titlo  to  tho  stock,  machinery,  tools,  and  fixtures  and  inven¬ 
tions  owned  wholly  or  in  part  by  the  party  of  the  first 
part  to  the  parties  of  tho  first  und  second  part  jointly,  to  be 
held  by  them  in  the  proportions,  respectively,  according  to 
tho  amount  of  capital  furnished  as  herein  stipulated,  shall 
be  taken  and  received  ns  full  pnyment  of  the  proportion  of 
capital  to  bo  supplied  by  tho  party  of  the  first  part. 

Fifth.  The  party  of  tho  first  part  shall  givo  his  whole 
time  and  nttoution,  talents,  und  inventive  powers  to  the 
business  and  interests  of  the  firm,  mid  shall  admit  no  other 


ns  hereinafter  set  fortli ;  but  nil  such  shall  enuro  and  belong 
to  tlie  parties  of  tlie  first  nnd  second  parts,  ns  ubovo  set 
forth,  in  tlie  proportions  ns  sot  fortli  in  section  sixth  of  tills 
indenture:  Provided,  however,  That  the  inventions  made 
exclusively  for  tho  Gold  &  Stock  Company,  which  under  a 
contract  between  said  party  of  tlie  first  part  nnd  Mr.lfnr- 
sliall  Lcflcrts  arc  to  be  tlie  sole  property  of  the  Gold  & 
Stock  Company,  are  not  to  be  included  in  this  agreement, 
lint  tlie  said  Edison,  or  party  of  the  iirst  part,  binds  him¬ 
self  not  to  invent  under  said  contract  any  machinery  that 
will  militate  against  automatic  telegraphy,  nor  to  sell, 
transfer  or  convey  to  any  parties  .whntevor,  without  the 
consent  of  the  party  of  the  second  part  hereto,  any  inven¬ 
tion  or  improvement  that  may  be  useful  or  desired  in  au¬ 
tomatic  telegraphy.  And  provided  further,  that  for  any 
original  inventions  or  improvements  that  tlio  party  of  the 
first  part  may  make  other  than  such  ns  may  be  suggested 
or  arise  from  the  current  work  in  the  manufactory,  there 
shall  be  allowed  and  paid  by  the  firm  to  the  party  of  the 
Iirst  part  a  reasonable  and  proper  compensation  therefor 
according  to  its  practical  value,  all  things  considered ;  such 
payment  to  be  in  addition  to  and  irrespective  of  the  pro¬ 
portionate  part  of  the  profits  of  tlie  business  of  the  firm  to 
which  tlie  party  of  tlie  iirst  part  would  be  otherwise  entitled. 
And  it  is  further  agreed  that  it  any  disagreement  shall 
arise  as  to  the  sum  which  may  be  claimed  as  “  reasonable 
and  proper  ”  to  be  paid  for  such  original  invention,  tho 
ipicstion  shall  be  referred  to  an  arbitrator ;  if  preferred  by 
either  of  tlie  parties,  to  three  disinterested  parties,  one  to 
be  chosen  by  each,  and  a  third  by  the  two  thus  chosen,  and 
whose  decision  shall  bo  final  and  binding  upon  both. 

Sixth.  That  ail  profits  arising  from  tho  biisiucss  of  the 
firm,  and  from  all  iuvontions  and  improvements,  nnd  from 
tho  manufactory,  shall  bo  divided  between  tho  parties,  as 
follows:  One-third  thereof  to  tho  party  of  the  first  part, 


and  two-thirds  to  tho  party  of  the  second  part;  and  all 
taxes,  rents,  insurances  and  oilier  expenses,  and  all  losses 
or  damages,  if  any  such  shall  occur,  shall  he  paid  from  tlie 
general  rceoipts  of  tho  firm  arising  from  its  business.  If 
tlicro  shall  bo  insufficient  receipts,  the  deficiency  shall  be 
supplied  by  tho  parties  hereto  in  tho  ratio  of  one-third  and 
two-thirds,  or  shall  be  taken  from  the  capital  of  tho  coni- 


Seaenth.  The  partners  shall  be  allowed  and  paid  from 
the  gross  revenues  arising  from  tlie  business  a  sum  equal 
to  fiftcon  por  cent,  upon  tlie  capital  per  aiinnin,  to  be  di¬ 
vided  into  monthly  payments,  and  a  like  por  centum  on 
moneys  ndvnnccd  by  cither  party  over  and  above  their 
proportionate  parts  of  tho  capital  us  above  set  forth.  And 
all  excess  of  profits  shall  rouiuin  in  tlie  treasury  of  the 
firm,  to  lie  appropriated  to  the  enlargement  of  tho  works 
and  manufactory,  and  extension  of  tlie  business,  as  may, 
from  time  to  time,  bo  agreed  upon.  Otherwise  than  as  set 
forth  in  this  section,  there  shall  be  no  moneys  or  property 
belonging  to  the  firm  withdrawn,  taken,  or  used  by  either 
partner,  oxccpt  upon  the  written  consent  of  botli  partners. 

Eighth.  The  party  of  tho  Iirst  purl  shall  have  control 
and  direction  ol  the  mnnufactury.  and  shall  employ  and 
dismiss  all  workmen  as  lie  shall  ileum  best  for  the  interest 
of  tho  firm  :  shall  purchase  at  lowest  cash  prices,  without 
commission,  tlie  machinery,  tools,  stock,  and  other  necessa¬ 
ries  required  in  tho  maiiufnctory,  and  generally  shall  bo 
responsible  for  tho  careful  preservation  of  tho  machinery 
and  property  of  the  company,  and  I  lie  economical  conduct 
of  the  ninniitactiiring  part  of  tho  business,  hut  the  manner 
of  kcoping  the  accounts  and  books  of  the  firm  and  manu¬ 
factory,  nnd  the  employment  of  persons  required  in  keep¬ 
ing  such  accounts  und  books,  nnd  all  that  relates  to  the 
financial  affairs  of  tho  firm  and  business,  and  tlie  dispusi- 


or  approved,  controlled  and  directed,  nt  Ilia  option,  by  the 
party  of  the  second  part. 

Ninth.  Tlioro  shall  be  no  notes  given,  nor  liny  liabili¬ 
ties  created  by  any  member  of  tlio  firm,  without  the 
previous  assent  of  both  the  partners. 

Before  contracts  shall  be  entered  into  for  tbe  manufac¬ 
ture  of  any  given  number  of  articles,  it  shall  be  the  dnty 
of  the  party  of  the  first  part  carefully  to  estimate  the 
whole  amount  of  moneys  that  will  bo  required  to  fulfil 
such  contract,  if  made,  and  the  length  of  time  that  will  be 
required  to  produce  the  articles  wanted ;  and  such  esti¬ 
mate  shall  be  submitted  to  the  party  of  the  second  pnrt,  in 
order  to  ascertain  if  the  financial  condition  of  tlio  firm  is 
such  ns  to  justify  the  outlay,  and  whether,  when  making 
the  contract,  it  should  not  be  provided  in  such  contract  for 
advances  to  be  made  by  the  parties  for  whom  the  work  is 
to  be  done,  in  proportion  ns  the  work  progresses,  and  before 
completion. 

Tenth.  Full  accounts  shall  bo  kept  of  all  business  done 
by  the  firm,  and  all  transactions  of  purclinsc,  manufac¬ 
ture,  sides,  receipts  and  payments  shall  be  clearly  and 
fully  recorded,  together  with  a  detailed  account  of  all  ex¬ 
penses  of  whatever  character  incurred.  And  the  books 
nud  accounts  shall  at  all  times  lie  open  to  the  inspection  of 
either  partner. 

Eleventh.  Each  partner  shall  give  a  true  account  of  all 
moneys,  property,  mnttcr,  and  tilings  thnt  may  come  into 
his  bauds,  or  to  ids  knowledge,  belonging  to  or  concerning, 
or  in  anywise  affecting,  said  partnership  or  said  business. 


provements  heretofore  mado  or  that  may  bo  hereafter 
by  tlio  party  of  tlio  first  part,  or  ordors  for  machinery 
instruments,  or  any’  part  tlioreof,  thnt  may  bo  obtninc 
oithorof  tho  parties  liorcto,  shall  bo.  manufactured,  1 
:  and  filled  at  and  from  the  manufactory  to  ho  Bet  up 
;  nted,  or  established  under  this  copartnership,  and  i 
other  place,  shop,  or  manufactory,  without  tho  conso 
all  tlio  parties  to  this  indenture. 

Thirteenth.  It  is  further  stipulated  and  agreed  tlin 
party  of  the  second  part  may,  at  his  own  option,  adi 
third  party  into  the  firm  upon  terms  of  equality  with 
and  with  the  party  of  the  first  part,  thnt  is  to  say, 
equal  third  part  or  intorcst  in  all  tlio  inventions,  s 
machinery,  tools,  anil  all  other  property  of  the  firm  a: 
the  business,  with  one-third  share  of  the  profits  and  1 
arising  therefrom,  and  one-third  boncfil,nnd  an  assiim 
of  one-third  of  all  tho  liabilities  of  tlio  firm  ;  Provided 
by  the  admission  of  such  third  party  the  interest  ol 
party  of  tho  first  pnrt  in  flic  property  and  business  o 
firm  shall  not  lie  lessened  thereby,  nor  the  stipulation 
agreements  anil  provisions  of  this  indenture  cluing 
•  modified,  cxcopt  in  so  far  as  must  necessarily  follot 

-  admission  of  n  third  pnrtnor  upon  nil  equal  footing  i 
forest  and  in  all  other  respects,  with  all  tlio  right 
privileges,  nml  subject  to  all  tho  restrictions,  to  be  enj 
or  imposed  upon  the  parties  to  this  indenture. 

Fourteenth.  This  partnership  shall  continue  for  a  p 
•or  term  of  five  years,  from  the  first  day  of  October,  eigl 
'hundred  and  soventy  unless  sooner  dissolved  by  in 

-  consent  of  all  the  parties. 


Twelfth.  It  is  further  stipulated,  agreed,  and  under¬ 
stood  that  the  manufacture  of  all  machinery,  instruments, 
tools  and  other  articles,  other  than  bo  much  aB  mnjr  be  nee- 


•  Fifteenth.  At  tho  expiration  of  tlio  partnership, 
•its  final  dissolution,  tho  property  and  assets,  alter  pi 


any  ono  of  tho  partners  shall  die  boforo  tho  expiration  of 
the  partnership,  tho  surviving  partner  or  partners,  if  there 
shall  bo  more  than  one,  shall  account  for  and  pay  over  to 
tho  executors,  administrators,  or  other  legal  representatives 
of  such  deceased  partner  his  proportion  of  tho  monoys  and 
of  tho  proceeds  of  all  property  and  assets  owned  by  said 
partnership  or  firm.  • 

Sixteenth.  The  provisions  of  this  indenture  may  be 
nltorcd  or  modified  from  time  to  time  upon  tho  agreement 
or  written  consent  of  all  parties. 

In  witness  whereof  tho  said  Thomas  A.  Edison  nnd  the 
said  George  Harrington  have  hereunto  set  their  hands  and 
affixed  thoir'soals  in  tho  city  of  New  York,  on  the  day  and 
date  first  above  written. 

(Signed)  '  GEO.  HARRINGTON,  r 

THOMAS  A.  EDISON.  L  'J 

In  presence  of— 

J.  W.  TltEADWELL, 

Ohab.  B.  Hiooinson. 


{Schedule  2.]  ,  ' 

Whereas  I,  Thomas.A.  Edison,  of  tho  city  of  Newark, 
State  of  Now  Jersey,  for  certain  valid  and  valuable  con¬ 
siderations  to  me  in  hand  paid,  and  in  further  considers-’ 
tion  of  certain  covenants  and  stipulations  to  bo  fulfilled  by 
George  Harrington,  of  Washington,  District  of  Columbia, 
did  stipulate  nnd  agree  to  invent  and  construct  for  tho  said 
Harrington  full  nnd  complete  sots  of  instruments  and  ma¬ 
chinery  that  should  successfully  and  economically  dovolop 
into  practical  use  tho  Little  or  other  system  of  automatic 


or  fast  systoin  of  tolcgrnphy,  nnd  subsequently  to  improve 
and  porfcct  such  instruments  nnd  machinery  by  adding 
thoroto,  from  timo  to  time,  such  further  inventions  ns  ox- 
pcrionco  should  demand  nnd'my  ability  ns  an  inventor  nnd 
olcctricinn  might  suggest  nnd  permit;  and  furthermore  to 
prepare  or  cause  to  bo  prepared  tho  necessary  description 
papors,  tho  models  nnd  drawings  requisite  to  obtain  patents 
for  all  such  inventions  nnd  improvements,  tho  said  inven¬ 
tions  and  improvements  to  ho  the  joint  property  of  thesnid 
Harrington  nnd  myself,  nnd  the  patents  to  ho  issued  to  the 
snid  Harrington  nnd  myself  in  tho  proportionate  interest 
of  two-thirds  to  snid  Harrington  nnd  ono-tldrd  to  mysolf; 
tho  wliolo  to  bo  umlor  tho  solo  control  of  saiil  Harrington, 
to  bo  disposed  of  by  him  for  our  mutual  benefit  in  the  pro¬ 
portions  heroinbeforo  recited,  in  such  manner  and  to  such 
extent  ns  ho,  tho  snid  Harrington,  should  deem  advisable, 
with  power  to  sell,  transfer,  and  convoy  tho  wliolo  or  any 
part  of  tho  rights  nnd  titles  in  nnd  to  nny  or  all  of  said  in¬ 
ventions  nnd  improvements,  ns  nlso  of  tho  patent  or  other 
rights  arising  therefrom.  And  tho  said  Harrington  having 
faithfully  fulfilled  nil  of  the  covenants  and  stipulations 
ontcrcd  by  him ; 

Now,  therefore,  bo  it  known  that,  in  consideration 
thereof  and  of  tho  sum  of  one  dollar  to  me  in  hand  paid,  I, 
Thomas  A.  Edison,  of  tho  city  of  Newark,  Stnto  of  New 
Jcrsoy,  do,  by  these  presents,  hereby  assign,  set  over,  nnd 
convoy  to  him,  tho  snid  Harrington,  two-thirds  in  interest 
of  all  my  snid  inventions,  including  therein  all  my  inven¬ 
tions  of  mechnnicnl  or  copying  printers,  nnd  of  all  tho 
patents  for  all  sncli  inventions  and  printers,  whothor 
nlrcndy  issued,  npplied  for,  or  to  bo  hereafter  applied  for, 
and  of  all  nnd  whatsoever  of  my  Inventions  nnd  improve¬ 
ments  made  or  to  bo  mndc,  nnd  of  all  tho  patents  that  may 
bo  issued  therefor,  that  nro  or  may  bo  applicable  to  auto¬ 
matic  tolcgrnphy  or  mechnnicnl  printers. 

And  whorons  Inin  desirous  of  obtaining  tho  co-operation 
and  assistnneo  of  tho  snid  George  Harrington  in  disposing 
of  my  snid  one-third  interest,  as  boforo  recited,  nnd  for  tho 


purpose  of  united  and  harmonious  action  in  negotiating  for 
its  uso  or  its  snlo  and  transfer  by  or  to  others  in  conjunction 
with  ids  own,  and  in  such  freo  and  unrestricted  manner  as 
will  tend  to  success,  and  for  the  sum  of  one  dollar  to  mo  in 
hand  paid,  the  receipt  whereof  is  hereby  acknowledged, 
Now,  therefore,  bo  it  known  that  I,  Thomas  A.  Edison,  of 
the  city  of  Newark,  State  of  Now  Jorsoy,  hnvo  constituted 
and  appointed,  and  by  those  presents  do  constitute  and  ap¬ 
point,  George  Harrington,-  of  the  city  of  Washington, 
District  of  Columbia,  my  true  and  lawful  and  only  attor¬ 
ney,  irrevocable,  with  power  to  substitute  for  mo  and  in 
my  name,  and  in  such  manner  ns  ho  may  think  best,  to 
soli,  transfer,  and  convoy  all  of  my  rights,  titles,  and  in¬ 
terest  in  and  to  any  and  all  of.my  snid  inventions,  and  the 
improvements  thereto,  whether  mndo  or  to  bo  mndc,  nnd  to 
sell,  transfer,  nnd  convey  all  of  my  rights,  by  patent  or 
otherwise,  arising  therefrom  already  mndo  nnd  obtained, 
nnd  all  such  ns  may  hereafter  bo  made  or  obtnined,  and  to 
cxecuto  in  full  any  or  all  the  necessary  papers  mid  docu¬ 
ments  requisite  for  the  transfer  of  title,  and  to  invest  in 
other  parties  full  and  legal  ownership  therein,  hereby 
divesting  myself  of  and  investing  him,  the  snid  Harring¬ 
ton,  witli  all  the  powers  necessary  in  tho  promises,  fully 
and  completely,  to  carry  out  tho  purposes  and  intentions 
herein  sot  forth,  hereby  fully  confirming  all  that  my  said 
attorney  may  or  shall  do  in  the  promises  as  fully  ns  if  done 
by  me  in  person,  and  requesting  the  Commissioner  of 
Patents  to  recognize  him  ns  such  nttornoy. 

In  witness  whereof  I  have  hereunto  sot  iny  hand  and 
affixed  my  seal,  in  the  city -of  Newark,  this  4th  day  of 
April,  1871. 

T.  A.  EDISON,  [t.  s.] 

In  presence  of— 

A.  D.  Coburn, 

A.  B.  Oandee. 


[Schedule  8.] 


This  memorandum  of  an  ngreomont  made  tho  ninth 
day  of  July,  1874,  by  nnd  between  Thomas  A.  Edison  nnd 
George  B.  Prescott,  witnosseth : 

Whereas  tho  6nid  Edison  nnd  Prescott  nro  tho  joint  in- 
rontors  of  certain  improvements  in  telegraphic  apparatus 
desuribed  ns  magnetic  duplex  apparatus,  being  tho  inven¬ 
tion  nnd  improvements  moro  particularly  described  here¬ 
after,  for  which  invention  tlioy  nro  about  to  apply  for  let¬ 
ters  pntont  .of  tho  United  Stntes,  to  bo  issued  to  them 
jointly. 

And  wliorcns  it  is  desired  by  both  parties  to  enter  into 
certain  engagements- with  cneli  other  as  to  their  respective 
interests  in  such  patent,  and  in  tho  uso  nnd  benefit  thereof. 

Now,  in  consideration  of  ono  dollar  to  each  of  snid 
parties  by  tho  other  paid  before  tho  sealing  and  delivery 
hereof,  nnd  tiie  receipt  of  which  is  hereby  by  each  of  them 
acknowledged,  it  is  covenanted  nnd  agreed  by  caeli  of  said 
pnrtios  with  the  other  as  follows : 

lBt.  That  the  improvements  and  invention  of  which  . 
they  nro  the  joint  inventors  and  in  respect  to  which  this 
agreement  is  made  are  all  those  inventions  for  making 
multiple  transmission  of  magnetic  signals  for  uso  in  tele¬ 
graphy  which  are  described  in  twelve  several  specifications 
now  in  the  hands  of  George  M.  Phelps,  for  tho  purpose  ot 
making  models  of  the  machinery  whereby  such  invention 
enn  be  operated,  and  being  all  tho  inventions  ot  said  par¬ 
ties,  whereby,  at  the  samo  timo  and  on  the  same  wire,  one 
message  may  be  sent  in  one  direction  nnd  one  message  in 
tho  opposite  direction,  or  two  messages  at  once  in  the  samo 
direction,  or  at  the  samo  timo  and  on  the  samo  wire  two 
messages  may  bo  sont  in  one  direction  nnd  two  messages  m 
the  opposite  direction. 


• , -r  ,.'Ui 


2d.  Tlmt  both  of  thorn  shall  Imyo  nn  equal,  undivided 
interest  in  nil  future  improvements  of  either  of  said  inven¬ 
tions  which  may  bo  made  by  either  of  them,  and  that,  if  it 
lie  necessary  in  order  to  secure  such  interests  to  cither,  the 
other  shall  make  an  assignment  and  transfer  of  sncli  in¬ 
terest  to  him  in  duo  form  sufficient  to  vest  such  interest  in 
him,  and  to  entitle  it  to  be  recorded  in  the  United  States 
Patent  Office. 

3d.  That  botli  of  the  parties  shall  have  an  equal,  un¬ 
divided  interest  and  bo  joint  grantees  of  ail  letters  patent 
of  tho  United  States  or  any  foreign  countries  which  may  ho 
granted  for  all  or  any  of  said  inventions,  or  of  nny  future 
improvements  thereof,  and  of  all  extensions  and  reissues  of 
any  such  letters  patent. 

4th.  That  whereas  Edison  lias  heretofore  exponded 
$1,125  for  models  and  patent  fees,  the  benefit  of  which  he 
contributes  to  the  common  interest,  and  waives  reimburse¬ 
ment  of  that  sum,  or  any  part  of  it,  Prescott  hereby  agrees 
to  pay  solely  and  without  contribution  from  Edison  all  the 
future  expunse  and  cost  of  specification,  drawings,  models, 
Patent  Office  Ices,  and  patent  solicitors' and  agents  fees, 
and  all  other  charges  incident  to  the  procuring  of  letters 
patent  for  any  of  said  inventions. 

5th.  That  neither  of  said  parties  will  sell,  assign,  or 
otherwise  dispose  of  the  whole  or  any  part  of  his  interest  in 
said  inventions  or  lettors  patent  therefor,  or  any  of  them, 
without  the  written  consent  thereto  first  obtained  of  the 
other  party. 

Oth.  That  neither  of  said  parties  will  liimsolf  manu¬ 
facture,  use,  or  sell,  nor  grant  licenses,  or  tho  right  in  any 
way  to  any  other  party  to  limn iitiict lire,  use,  or  sell  any  of 
the  said  inventions,  or  any  improvements  thcruof,  or  nuy 
machine  embodying  or  articlo  containing  nny  of  said  inven¬ 
tions  or  improvements,  or  protected  by  any  of  said  letters 
patent  without  the  written  consent  first  obtained  of  tho 
other  party. 

7th.  No  sale  of  any  of  tho  said  inventions  mid  no 
license  or  right  to  mnko  or  use  tho  same  iu  any  way  shall  bo 


insde  or  given  except  at  a  price  to  which  both  pnrties  ngroo, 
and  all  net  profits  shall  bo  equally  divided  between  tho  par¬ 
ties  hereto. 

8th.  Tim  covenants  and  provisos  of  this  agreement 
binding  either  of  the  parties  hereto  simll  also  bind  his  ex¬ 
ecutors,  administrators, -and  assigns. 

In  witness  wheroof  tho  said  pnrties  liavo  hereunto 
sot  their  hands  and  seals  tho  day  mid  year  first  above 

THOMAS  A.  EDISON,  |>  «•] 
GEORGE  B.  PRESCOTT,  [l.  s.] 

Sonled  and  delivered  in  presence  of — 

R.  II.  Rochester. 

County  of  New  York,  *s.  : 

On  this  ninth  day  of  July,  in  the  year  one  thousand 
eight  hundred  mid  sovcnty-foiir,  before  me,  personally 
,  came  Thomas  A.  Edison  and  George  B.  Prescott,  to  mo 
known  to  be  the  individuals  described  in  and  who  executed 
the  foregoing  instrument,  and  severally  acknowledged  that 
thoy  executed  the  same  for  the  purposes  therein  men- 
v  tioned. 

R.  H.  ROCHESTER, 
Notary  Piiblio ,  New  York  oily. 


V? 


i 


RULES  OF  PRACTICE 


UNITED  STATES  PATENT  OFFICE. 


SEPTEMBER,  1875. 


RULES  OF  PRACTICE 


UNITED  STATES  PATENT  0FF.ICE 


United  States  Patent  Office, 

September  1.  1875. 

!  following  information  and  regulations,  designed  to 
strict  accordance  with  the  revised,  consolidated,  and 
ilcd  law  relating  to  patents  for  inventions  and  designs, 
>  trade-marks,  are  published  for  gratuitous  distribution, 
•ious  forms,  to  which  inventors  and  attorneys  are 
intended  to  conform  as  nearly  ns  possible,  will  be  found 

nted  copies  of  the  revised  and  amended  law  may  also 
tained  by  applying  to  the  Patont  Ollice. 

WHO  MAY  OBTAIN  A  PATENT. 


:  If  otherwise,  a  letter  should  accompany  end, 
to  what  application  it  belongs,  and  giving  the  2’,?*' 

arassasssoarS  ' 

8.  The  application  and  oath  must  bo  made  by  the  actual  Ml.  .. 

;r0r;,aIV°-T"  if  0,0  «"«»  is  t0  «■£>  toanaJttlri^ 

“Lt  o'tl  '0  ;UVl'“t0l'i8  llea,,■ t*10 application  and  * 
oath  must  bo  mado  by  his  executor  or  administrator. 

9.  The  application  must  bo  in  writing,  in  the  English  or, i„  , 
language,  and  addressed  to  the  Commissioner  of  Patents  ”S“P' 
Tho  petition  and  specillcation  must  bo  separately  signed  by 

tho  applicant.  Tho  spceiBcation,  claims,  and  all  ameneb 
?ac"ts  must  bo  written  in  a  fair,  legible  hand,  otherwi  e, 
bo  Office  may  require  them  to  be  printed  ;  and  all  inter! 
liueutions  or  erasures  should  bo  clearly  marked  iu  a  mar¬ 
ginal  or  foot  note  written  on  the  same  sheet  of  paper.  All 
.  tho  papers  constituting  tho  application  should  bo  attached 
together.  Legul-cap  paper  is  deemed  preferable,  and  a 
wide  margin  should  always  bo  left  upon  tho  left-hand  side 
of  tho  page. 

10.  Tho  applicant,  if  the  inventor,  must  make  oath  or  af-  oaih  M,i  ]u 
itraiution  that  lio  does  verily  believe  himself  to  bo  tlio”“tu™-' 
original  and  ilrst  inventor  or  discovererof  tho  art,  machine, 
manufacture,  composition,- or  improvement  for  which  ho 
solicits  a  patent;  thuthodoes  not  know  and  does  not  bc- 
liovo  that  tho  sumo  was  ever  before  known  or  used ;  mid 
shall  state  of  wliut  country  ho  is  a  citizen,  and  of  what  a 
resident.  If  tho  application  bo  mado  by  an  executor  or 
administrator,  tho  form  of  tho  oatli  will  bo  correspondingly 
clinugcd.  Tho  oath  or  affirmation  may  bo  mado  beforonny 
poison  within  tho  United  States,  authorized  by  law  to  ad¬ 
minister  oaths,  or,  when  tho  applicant  resides  in  n  foreign  ' 
country,  boforo  any  minister,  churgtS  d'affaires,  consul,  or 
commercial  ugent,  holding  commission  under  tho  Govern- 
incut  of  tho  United  States,  orboforo  any  notary  publio  of 
tho  foreigu  country  iu  which  tho  applicant  may  bo,  tho  onth 
whig  attested  in  all  cases,  in  this  and  othor  countries,  by 
tho  proper  officiul  seal  of  such  notary. 


tious ;  nor  does  tho  foot  that  one  man  furnishes  tho  capital 
nml  tho  otlior  makes  tho  invention  entitle  them  to  tuko  out 
a  joint  pntout. 

wimt  Kill  bu  A  l)lltont  wi“  not  *JO  granted  to  an  applicant  if  what 
ho  claims  ns  now  has  been,  bol'oro  his  invention,  patented 
or  described  in  any  printed  publication  iu  this  or  any  for- 
oign  country,  or  boon  invented  or  discovered  iu  this  country 
nor  if  ho  has  ouco  abandoned  his  invention,  nor  if  it  has  been 
iu  publio  uso  or  on  sale  more  than  two  years  previous  to  Ids 
application. 

wile,  loiowi.  B-  If  't  appears  that  tho  iuvontor,  at  tho  tiino  of  making 
Sbrawi'hu  fir!1  llia  application,  boliovos  liiiusolf  to  be  tho  ilrst  inventor  or 
discoverer,  a  patent  will  not  bo  refused  on  account  of  tho 
invention  or  discovory,  or  any  part  thereof,  having  been 
known  or  used  in  any  foreign  country  before  his  invention 
or  discovery  thereof,  it  not  appearing  that  tho  samo,  or  any 
substantial  part  thereof,  hud  beforo  been  patented  or  de¬ 
scribed  in  any  printed  publication. 

0.  Merely  conceiving  tho  idea  of  an  improvement  or  uia- 
ohiuo  is  not  an  « invention  ”  or  “  discovory."  Tho  invention 
must  have  been  reduced  to  a  practical  form,  either  by  tho 
construction  of  tho  maehino  itself,  or  of  n  model  thereof  or 
by  making  a  drawing  of  it,  or  by  such  disclosure  of’ its 
exact  character  that  a  mechanic,  or  one  skilled  iu  tho  art  to 
which  it  relates,  can  and  does,  from  tho  description  given, 
construct  tho  improvement,  or  a  model  thereof,  beforo  it 
will  prevent  a  subsequent  inventor  from  obtaining  u  patont. 

MODE  OF  PBOCEEDINO  TO  OBTAIN  A  PATENT. 


]&•  ,7,  ¥°  BPl,I|eation  for  a  patont  can  bo  placed  upou  iho 
flies  ior  examination  until  tho  fee  is  paid,  tho  specillcation 
and  tho  petition  and  oath  are  tiled,  and  tho  drawings  mid  a 
model  or  specimens  (when  required)  are  furnished.  Tho 
application  must  bo  completed  and  prepared  for  exainina- 
bon  within  two  years  after  thoilliug  of  tho  petition ;  mid, 
l  "!  ,,  ™11  or  11110,1  f,,lluro  of  tho  applicant  to 
prosecuto  the  sauio  within  two  years  after  any  action  them- 
°f  ,'jbicU  uoHeo  shall  havo  been  mailed  to  him  or  his 
ra  rcear(lodas  abandoned,  unless  it  bo  shown, 

lwoi“  n  th000UU1'iS3i0"er,  that  such  delay  was 

tk,U,t  emr»thi"!>  Pessary  to  malto  tho  applica¬ 
tion  complete  should  be  deposited  in  the  Offlco  at  tho  samo  time. 


,  ”  01  0lai,"S»  not  substantially  embraced  in  ll, 

original  affidavit,  ho  will  bo  roQuirod  to  file  a  supplement 
onth  relative  to  tho  invention  ns  covered  by  snob  n»w 
enlarged  claim  orclninis;  mid  snob  supplemental  oath  inns 
bo  upon  tho  sumo  pnpor  which  contains  tho  proposed  nmoiiil 


12.  Tho  specification  isnwritten  description  of  tho  inven 
tion  or  discovery,  mid  of  tho  mnnnor  and  process  of  nink 
ng,  constructing,  compounding,  and  using  tho  same,  and 
is  required  to  bo  in  such  full,  cloar,  coneiso,  anil  exact  terms 


a  to  tuo  different 
invention  for  wh 
nciplo  thereof  nud 
ooutouiplated  mini 


1  claim  of  tho  pending  application  to  whichever  inven- 
u  ho  may  elect;  tho  other  inventions  may  bo  nmdo  tho 
ijoct  of  sepurnto  applications. 

.7.  Tho  specification  must  bo  signed  by  tho  inventor,  or 
his  executor  or  administrator,  and  must  bo  attested  bv 
.  witnesses.  Full  names  must  bo  given,  and  all  names, 
Mer  of  applicants  or  witnesses,  mast  bo  legibly  written. 


8.  Tho  applicant  for  n  patent  is  required  bv  law  to  fur- 
ii  u  drawing  of  his  invention,  where  tho  imturo  of  tho1 
o  admits  of  it. 

9.  Three  several  editions  of  patent  drawings  nro  printed 
published ;  one  for  Ofllco  use,  certified  copies,  &c.,  ofl 
size  aud  character  of  those' attached  to  patents,  tho 
k  being  about  0  by  !M  inches;  ouo  reduced  to  half  that 
e,  or  one-fourth  tho  surface,  of  which  four  will  bo  printed 
a  pngo  to  illustrato  tho  volumes  distributed  to  tho 

rts,  &c.  ;and  one  reduction — to  about  tho  same  scale _ of 

lcctcd  portion  of  each  drawing,  to  illustrato  tho  Official 
cttc. 

his  work  will  all  bo  done  by  tho  photo-lithogmphio  or 
:r  analogous  process,  and  in  coiisequcuco  tho  character0 
mb  original  drawing  must  bo  brought  ns  nearly  ns  pos- 
i  to  a  uniform  standnrd  of  excellence,  suited  to  the  rc- 
etnents  of  tho  process,  and  calculated  to  give  the  best 
Its,  in  tho  interests  of  inventors,  of  tho  Offico,  and  of 
public  generally.  Tho  following  rules  will  therefore  bo 
lly  enforced,  and  nny  departure  from  them  will  bo  cer- 
to^auso  delay  in  the  examination  of  an  application  for 
rs  patent. 

a.  Drawings  should  bo  mndo  upon  paper  stiff  enough 
to  stand  iu  tho  portfolios,  tho  surface  of  which  must  be  jj 
calendered  nud  smooth.  “Two-sheet”  bristol-bonrd, 
or  sheets  cut  from  Whatman’s  hot-pressed  drawing- 
paper,  “antiquarian”  size,  nro  recommended. 

Indian  ink  of  good  quality,  to  tho  exclusion  of  all 
other  kinds  of  ink  or  color,  must  bo omploycd,  to  secure 
perfectly  black  and  solid  work. 


tlio  “  sight »  precisely  8  by  13  inches.  Within  this  mnr- 
gin  nil  work  nml  signatures  mnst  bo  included.  One  of 
tho  smaller  sides  of  tho  shcot  is  regarded  as  its  top,  and, 
measuring  downward  from  tho  marginal  lino,  a  spacoof 
not  less  than  1J  inch  is  to  bo  loft  blank  for  tho  inser¬ 
tion  of  title,  namo,  number,  and  date.  Tho  signatures 
will  bo  placed  in  a  space  loft  at  tho  bottom  of  tho  sbeot. 

c.  All  drawings  must  bo  made  with  tho  pen  only, 
using  tho  blackest  Indian  ink.  Every  lino  and  lottor, 
(signatures  included)  mnst  bo  absolutely  black.  This 
direction  applies  to  all  lines,  liowovor  flue,  to  shading, 
and  to  lines  representing  cut  surfaces  in  sectional  views. 
All  lines  must  bo  olonn,  sharp,  and  solid,  and  they  must 
not  bo  too  lino  or  crowded.  Snrfnco  shading,  when 
used,  should  boleftvcryopen.  Sectional  shading shonld 
bo  by  obliquo  parallel  lines,  which  may  be  about  one- 
twentieth  of  an  inch  npnrt.  Tho  usual  reduction  will 
bring  them  to  about  ono-sixticth  of  an  inch  distance. 

d.  Drawings- should  bo  made  with  tho  lowest  lines 
possiblo  consistent  with  clearness.  By  observing  this 
ralo  'tho  effectiveness  of  tho  work  nftor  reduction  will 
bo  much  increased.  Shading  (except  on  Boctionnl 

•  viows)  should  be  used  only  on  convox  and  concnvo  sur¬ 
faces,  whore  it  should  bo  used  sparingly,  and  mny  oven 
there  bo  dispensed  with  if  tho  drawing  is  otlicrwiso  well 
executed.  Tho  plane  upon  which  n  sectional  view  is 
taken  should  bo  indicated  on  the  general  view  by  a 
broken  or  dotted  lino.  Heavy  lines  on  tho  shudo  sides 
of  objects  should  bo  used,  except  where  they  tend  to 
thicken  tho  work  and  obscure  letters  of  reference.  The 
light  is  always  supposed  to  como  from  the  upper  left- 
hand  corner,  at  an  angle  of  forty-lira  degrees. 

Imitations  of  wood  or  surface-graining  must  novel- 
bo  attempted. 

c.  Tho  scale  to  which  a  drawing  is  mndo  ought  to  bo 
largo  enough  to  show  tho  mechanism  without  crowding, 
and  two  or  more  sheets  should  bo  used  ir  ono  docs  not 
give  sufficient  room  to  accomplish  this  end;  but  the 
number  of  shoots  must  never  bo  increased  unless  it  is 
absolutely  necessary.  On  tho  othor  hnnd,  when  an  in¬ 
vention  is  simple  and  easily  understood,  it  should  be 
shown  on  a  small  scale,  and  unnecessary  space  should 
not  bo  occupied,  oven  on  a  single  sheet. 

It  often  happens  that  an  invoution,  although  consti¬ 
tuting  but  n  small  part  of  n  machine,  has  yot  to  bo 


7 

represented  in  connection  with  other  and  much  larger 
parts.  In  such  eases  a  general  view  on  n  small  scnlo  is 
rccommouded,  with  ono  or  more  of  tho  invention  itself 
on  a  mncli  larger  scale. 


/.  Lottors  of  roforonco  mnst  bo  woll  and  carefully  „f. 

formed ;  they  are  of  tho  first  importance.  When  at  all 
possiblo,  no  lottor  of  reference  should  measure  less  than 
ono-cighth  of  an  inch  in  height,  that  it  may  boar  reduc¬ 
tion  to  one-twonty-fonrth  of  an  inch,  and  tlioy  may  bo 
much  larger  when  there  is  sufficient  room. 

Bcforenco  letters  must  bo  so  plneed  in  thocloso  and  ■'V-esSS 
complex  parts  of  drawings  ns  not  to  interfere  with  a 
thorough  comprehension  of  tho  same,  and  to  this  end 
should  rarely  cross  or  mingle  with  tho  lines.  When 
necessarily  grouped  around  a  certain  part,  they  shonld  Hf 

bo  placed  at  a  little  distance,  where  there  is  available  HT 

space,  and  connected  by  short  broken  linos  with  tho  H 

parts  to  which  tlioy  refer.  Tlioy  must  novor  appear  H 

upon  shaded  surfaces,  and,  when  it  is  difficult  hvavoid  HI 

this,  a  blank  spaco  must  bo  left  in  tho  shading  where  HI 

tho  letter  occurs,  so  that  it  shall  npponr  purlbctly  dis-  HI 

tini-.t  nml  ocpnrnto  ft-om  tlio  work.  ■ 

If  tho  same  part  of  an  invention  appears  in  more  M 
than  ono  figure,  it  should  always  bo  represented  by 
tho  same  letter.  Jj 

When  it  is  necessary  to  turn  a  drawing  upon  its  side 
in  reading  n  certain  figure,  its  number  and  roforonco 
-letters  should  bo  mndo  to  correspond,  and  should  bo  so 
placed  thnt  the  sheet  will  bo  turned  to  tho  right. 

g.  Tlio  signature  of  tho  inventor  is  to  bo  plneed  nt^  stature,  and 
the  lower  right-lmnd  corner  of  tlio  sheet,  and  tlio  sigun- 1  a 
tares  of  the  witnesses  ut  tho  lower  left-hand  corner, 
all  within  the  marginal  line.  (Seo  specimen  shcot.)  Tlio 
title  should  bo  written  with  pencil  on  tho  back  of  tlio 
sheet.  Tho  permanent  nnincs  mid  title  will  bo  supplied 
subsequently  by  the  Offico  in  uniform  stylo. 

When  figures  are  larger  than  tho  width  of  tho  shoot, 

Jho  latter  is  turned  on  its  side,  anil  tho  spneo  for  head¬ 
ing  will  bo  left  at  tho  right,  and  thnt  for  tlio  signatures 
at  tho  left,  occupying  tho  sarao  spneo  and  position  ns  in 
tho  upright  subjects,  so  thnt  tho  bending  and  names 
’  will  road  right  when  tho  drawing  is  hold  in  an  upright 
position. 


tiou  of  a  figure  with  express  roloronce  to  tuo  unzette, 
but  which  might,  ut  the  suuie  time,  net  us  oue  of  tho 
figures  referred  to  in  tho  specification.  For  this  pur¬ 
pose,  tho  figure  may  be  a  plan,  elevation,  scotion,  or 
perspective  view,  according  to  tho  judgment  of  tho 
draughtsman.  It  must  not  cover  a  space  oxcecdiug 
sixteen  square  inches.  All  its  parts  should  be  espe¬ 
cially  open  and  distinct,  witli  very  little  or  no  shading, 
and  it  must  illustrate  tho  invention  claimed  only,  to 
tho  exclusion  of  all  other  details.  (See  Fig.  I,  opposite 
page  42.)  When  well  executed,  it  will  bo  nsed  without 
curtailment  or  change;  but  any  attempt  ut  oxccssivo 
■  fiueuoss,  crowding,  or  unnecessary  elaborateness  of  de¬ 
tail,  will  iusuro  its  rejection  for  Gazette  purposes. 

i.  Drawings  should  bo  rolled  for  transmission  to  tho 
Office,  not  folded.  • 

No  agent’s  nor  "attoiney’o  otamp,  nor  any  written 
address,  will  bo  permitted  upon  tho  face  of  a  drawing 
within  or  without  tho  marginal  line. 

These  rules  do  not  apply  to  drawings  for  designs  nud 
trade-marks,  as  the  Oflice  does  not  duplicate  these. 
(See  ltules  for  Designs  aud  Trade-Marks.) 


Id  applications  upon  dcsigus.  It  must  clearly  exhibit  every 
feature  of  tho  muchino  which  forum  tho  subject  of  a  claim 
of  invention,  but  should  not  include  other  matter  tbuu  that 
covered  by  tlio  actual  invention  or  improvement,  unless  it 
is  necessary  to  tho  exhibition  of  a  working  model.  When 
the  invention  is  a  composition  of  matter,  a  specimen  of  each 
of  tho  ingredients  and  of  the  composition,  properly  marked, 
must  accompany  tho  application. 

05.  ti,o  model  must  bo  neatly  and  substantially  mado  of 
durable  material,  metal  being  deemed  preferable;  and 
should  not  in  auy  case  bo  more  than  one  foot  in  length, 
width  or  height.  If  made  of  pine  or  other  solt  wood,  it 
should  bo  painted,  stained,  or  varnished.  Glue  must  not 
bo  used,  but  tho  parts  should  ho  so  connected  ns  to  resist 
tho  notion  of  heat  or  moisture. 

■>(1.  A  working  model  is  always  desirablo,  in  order  to  on 
able  tho  Ofilco  fully  and  readily  to  u.  1  l  1  tl  t 

operation  of  tho  machine.  .  , 

27  Tho  model,  unless  it  is  deemed  necessary  that  it  b< 
preserved  in  tho  Oflice,  or  unless  it  bo  otherwise  dispose! 
of,  may  bo  returned  to  tho  applicant  upon  demand,  and  a 
his  expense,  in  all  cases  where  an  application  has  boon  re 
jeeted  inoro  than  two  yenrs;  and  tho  model,  in  any  pend  1 
Sof  less  than  two  years’  standing,  may  be  returned  t 
tho  applicant  upon  tho  flliug  of  a  formal  abandonment  0 
tho  application,  siguod  by  applicant  in  porson. 

28  -Models  filed  ns  exhibits,  in  interference  and  othc 
cases,  may  bo  returned  to  tho  applicant  or  otherwise  du 
posed  of  at  tho  discretion  of  tho  Commissioner. 

THE  EXAMINATION. 


tions  to  tlio  nbovo  rulo  in  rotation  to  tbo  order  of  oxann. 

'  nation.  If  an  application  is  found  to  conflict  with  a  envent, 
its  examination  will  ho  suspended  ns  hereinafter  provided. 

Tho  first  stop  in  tlio  cxnmiuntion  of  any  application  will  ho 
to  determine  whothor  it  is,  in  all  respects,  in  proper  form. 
If,  liowovor,  an  objection'  ns  to  form  is  not  vital,  tlio  exam¬ 
iner  may  proceed  to  the  consideration  of  the  application  on 
its  merits;  but  in  such  case  lie  must,  in  his  first  letter  to 
applicant,  state  all  his  objections,  whether  formal  or  other¬ 
wise. 

inf  30.  Tlio  personal  attendance  of  tlio  applicant  at  tlio  Patent- 
"“'Oflleo  is  unnecessary.  The  business  can  bo  dono  by  cor¬ 
respondence  or  by  attorney ;  and  if  there  has  been  an  assign¬ 
ment  of  the  whole  or  of  an  undivided  part  of  the  invention, 
the  assiguoo,  or,  in  the  latter  ense,  the  assignee  and  the 
inventor  jointly,  will  bo  recognized  as  the  proper  party  to 
prosecute  tlio  application. 

ltd,  31.  Tbo  applicant  has  a  right  to  amend  after  tlio  flrst  rc- 
"">1jection;  and  ho  may  amend  as  often  as  the  examiner  pre¬ 
sents  any  now  references.  After  a  second  rejection,  and  at 


to  time  of  the  fllin 
i  this  can  only  bo  n 
volition  docs. not  ni 
nt  of  the  specillcii 
f  to  tlio  Ooimnissi 


«rcrv  case  of  amendment  tlio  exact  worn  orwoum  w 
stricken  out  or  inBortcd  should  bo  clearly  specified,  and 
the  precise  point  indicated  wlioro  tho  erasure  or  insertion 
is  to  bo  made. 

o-i  whenovor,  on  examination,  any  claim  for  a  patent  is 
mlcotcd  for  any  reason  whntovor,  the  applicant  will  bo 
Scd  thereof,  and  the  reasons  for  such  rejection  will  bo 
-ivon,  togothor  with  such  information  and  references  as 
my  bo  useful  in  judging  of  tlio  propriety  or 
hi  supplication  or  of  nltcring  his  specification;  and  if,  nfte 
Lining  such  notice,  ho  shall  persist  in  his  claim  for 
patent,  with  or  without  altering  his  specification,  tlio  ensi 
rill  ho  ro-oxntnincd. 

11  Unon  the  rejection  of  an  application  for  wnnt  c 
,0T0lty,Pthe  examiner  must  cite  the  best  references 
,is  command,  and  the  applicant  will, ‘f  * nll 
he  entitled  to  a  specific  rcforonco  (by  na.no,  dato,  a 
riass,or  tho  equivalent  thereon  to  tlio  article  ornrticl 
by  which  it  is  anticipated.  If  ho  desires  a  copy  of  tl 
so  referred  to.  or  of  tho  plates  or  drawings  co 
nested  with  them,  they  will  ho  fonvartM  to  um,  iHr. 
possession  or  tho  Ofiicc,  on  payment  of  tlio  cost 
sncli  copies. 

35.  When  the  rejection ,  of  an 


35.  WllCll  tlio  ri-jL-u,... . .  . 

another  enso  previously  rejected 

abandoned,  tlio  applicant  will  hi 


but  not  withdrawn 
furnished  with  all  infi 


(l,  tho  applicant  will  l>c  niro 
relation  to  tlio  provion  lj  rejeci ted  '  t 


necessary  for  tho  proper  nnderstan 

his  own.  But  this  rule  does  not 

pending  applications  ns  references. 

30.  Tho  specification,  especially  if  the  <'l',1”1“ 
must  hi  amended  and  revised,  if  required  *  **«*m». 
for  tlio  purpose  0r  correcting  corr(!9pomlci 

or  unnecessary  prolixity,  a  of  tlm  invent 

between  tlio  statement  «nl1  ”  or  „f  gn 


siy-rejccwu  - . . 

ndiug  and  management 
b  authorize  tbo  citation 


12 


DATE  OP  PATENT. 


fo°  1,1,8  been  l>ni(l  to  the  Treasurer  or  le  i,  .  tl,u 
\  7  •JejiBuatod  de^itariT  of'tC 

/  th«  rim  ‘S’.0*0  eertWcat“  of  deposit)  bo  not  rccoivcd  at 

g  plication,  as  hereinafter  provided.  *  10W  ,lp‘ 

A  patent  will  not  bo  antedated. 

WITHDRAWN  AND  REJECTED  APPXICATIONS 

*" "  "p  rrJ^cd 

oTc^'actir^r^dle^o^or  «**<*£& 

rart:jt  rsi^^r^r  "*-**■  *» 

regarded  as  eonstitati’ng  » tno!™!  °  U,°Ut,°,,ed’  *D1  b“ 

* ■ 

action  tbcrcoa,  it  must  bo  shown  to  V  ^’C“ra  a,ler  a,,J' 
Commissioner  that  such  delay  was  uaJ^S^"  ^  ^ 

appeals. 

CW°''  a,,y  of  thodS’S1 whfcMmlo" twice1" “to  tal,e|0f  Opat0n4 
appeal  from  the  decision  of  tko  7  b  °“  reJcctcd>  “ay 

must  bo  filed,  slgucd  by  the  partv^Tld  P0ti?0,‘in  writi"S 

uStunrit  ®*1®  Statement  Of  tlin  rnnn  ...s', 

'  distinctly  and  speci"  ••  nl,pcal  sl,<mld  l,oil|t  out 

-  supposed  errors  of  tho  ox- 


amincr’s  notion,  and  should  const!!. ,,  fl 

met  upon  which  tho  applienn  '  elv  h,  °f  “*  nrgl"  '  U 
appeal.  Before  tho  appeal  is  outer  lined  ?,"1,port  °f  bis  U 

statement  will  bo  submitted  to  tZ  br ‘'“board,  this  |f 

will  make  nnswerinwritingtouehiiii  n«r}  OJ!nminori  "']l°  tJ  '' 

tlioroin.  8  touol,i,,ff  all  tho  points  involved  U  .  J 

'  If  tho  appollnnt  desires  to  bn  i„„,  ^@8 

boanl,  bo  should  so  indicate  wlionhn°mn  y  boforo  1,10 
of  hearing  will  then  bo  flxed  nnrt  dlli  '‘l?  np,)unI  i  ■  d«.v 
bo  given  him.  s«'l,  and  duo  notice  of  the  same 

'A3.  Tho  oxaminors-in. chief  will  consider  ti 
when  last  passed  upon  by  tho 2,m.  tI,00!,80nsit™s 
revising  ids  decisions  so  lim  ns  mv  wf  J’  "01'’"’010'!’ 
appellant.  If,  however,  thoydiscSr  oZc'nlnltV"0 
by  tho  examiner,  why  a  patent  sl,n„i,i  „  ?•  "ot  glvea 
aiako  a  statement  to  tlttU;  effect  to  the T183'!*’11 1 should 

If  affidavits  are  ™™i..  !  10  Con,lm8aio,,®r. 

lias  been  npponled,  tho  appllMtion  will'l  ^  0ft8r  tbo  case 
“"minor  for  reconsideration.  °  romn,u,od  to  tbo 

>iiiiiHy  fficdl1  or."^ ainen^c™inC "“nmtttwof <?ni"IS  ns  or'g‘ too™,3",l,0‘ 

.  ;«.o  amonded  claims;  and  „Ythe  ,n8  ^  7°°’  npon 
upon  and  all  proliminarv  anil  !  USfc  bo  Imssed 

be^cttled  before  tho  ease  is  appealed  to  ^e  ZHt”  mUSt 

p™“o7™S'Zc T"  1,rCli'ni,mry  01  “tora.ediato/rr.fra„F, 

L„  7,"  n  -  f  "ct> onco  wpoated,  will  bo  ro-ovnni-  Ef««EJr  v°m' 
ta’soUin,?  ST*  inperson>  ‘",0"  written  applies- 
rreto  b  h7“  J  :igr0nm,S  °f  U“  a»P«»'.  and  aimwer 
of  this  class  no  ZZZ^l 

Jn\  ^  Wbicb  ,lavo  bcon  '“aril  and  decided  on  appeal  ,,,  , 

■  ,  '0  b!f7,,e',Cd  ¥  «.o  examiner  without  ita  S  ^' 
l  Commissioner;  and  cases  which  have  been 

ibem  l^nt  M7miere  i,1C"iflf  wi"  ,,ot  be  reheard  by 
“em,  except  upon  tho  snino  authority, 
unses  which  have,  been  deliberately  decided  by  one  Com- 

«S  state  or  f0ttb°  T"9idcrc<1  * l,is  upon  tho 

occordanne  T  ,0y  ,n"y’ l,owovor,  bo  rcoponed  in 

primes  wind,  govern  th0 

O^nt'i!  0n8¥  '7i0b  bnV0  bcon  notc(1  0,‘-  by  tho  board  a,.„.-.i.  ,„ra 
a- .wainhiers-m-ohiof  may  bo  brought  beforo  tho  Coiiimis."f  r',“’r"“" 
in  porson,  upon  a  writton  request  to  that  ofleot, 


14 


>u-  47.  From  au  adverse  decision  upon  tlio  claims  of  ail  nppli. 
'cation  au  appeal  may  bo  taken  to  tlio  Supremo  Court  of  tlio 
District  of  Columbia  sitting  fa  banc.  In  taking  such  ap¬ 
peals  the  applicant  is  required,  uuder  tbo  rules  of  tbe  court, 
to  pay  to  tlio  clerk  of  tlio  court  a  dockot-feo  of  ten  dollars, 
mid  bo  is  also  required  by  law  to  lay  boforo  tbo  court  certi¬ 
fied  copies  of  all  tbo  original  papers  and  ovidcuco  in  tlio 
ease.  Tlio  petition  should  bo  filed  nud  tbo  fco  paid  at  least 
ten  days  boforo  tlio  commcneemcut  of  tbo  term  of  court  at 
wbicb  tbo  appeal  is  to  bo  beard. 

Immediately  upon  taking  an  appeal  tlio  appellant  must 
give  uotieo  thereof  to  tbo  Commissioner  of  Patents,  and  filo 
in  tbo  Patent-Oflieo  bis  reasons  of  appeal,  specifically  sot 
forth  in  writiug. 

Tbo  docket  for  tbo  trial  of  cases  appealed  from  tbo  dccisiou 
of  tbo  Commissioner  of  Pateuts  will  bo  called  on  tbo  first 
day  of  each  session  of  tbo  supremo  court  of  tlio  Distriut  of 
Columbia  in  general  term.  These  sessions  nro  held  tiirco  in 
each  year,  and  begin  respectively  on  tlio  lint  Monday  iu 
January,  the  third  Monday  in  April,  uml  tlio  foui-tli  Monday 
in  September. 

»  J8-  111  eases  of  interfcreuco  parties  lmvo  tlio  sumo  remedy 
o  by  appeal  to  tbo  examiners-in-chief,  mid  to  tbo  Commis¬ 
sioner,  as  iu'  cx-parte  cuses;  but  no  appeal  lies  iu  such  cases 
from  tbo  decision  of  tbo  Commissioner.  Appeuls  in  inter¬ 
ference  cases  should  bo  accompanied  with  a  briof  statement 
of  tbo  reasons  therefor;  and  both  parlies  will  bo  required 
to  filo  briefs  of  their  arguments  at  least  live  days  beroro  tbo 
day  of  bearing.  Printed  briefs  arc  in  all  eases  preferred. 


40.  All  cases  peudiug  boforo  tbo  Commissioner,  tho  bonrd 
of  exnmiuers  iu-chlcf,  or  tbo  examiner  in  charge  of  interfer¬ 
ences,  will  stand  for  argument  at  12  o’clock  on  tlio  day  of 
bearing,  unless  some  other  hour  bo  specially  designated. 
If  cither  party  iu  a  contested  case,  or  tbo  appelluut  iu  an  ex- 
parte  case,  appears  at  that  time,  ho  will  bo  heard,  but  a  con¬ 
tested  case  will  not  bo  taken  up  for  oral  argument  after  tho 
day  of  bearing,  except  by  consent  of  both  parties,  if  tbo 
engagements  of  tho’ tribunal  before  whom  the  caso  is  pond¬ 
ing  aro  such  as  to  prevent  it  from  being  taken  up  ou  tbo 
day  of  bearing,  a  now  assignment  will  bo  made,  or  tho  caso 


will  bo  continued  from  day  todnv  until  i  ,  „  ' 

wise  ordered  before  tbo  bearing  beginl^m  '  UuIess  otbor- 
bo  limited  to  one  hour  for  each  counsel  nrg"",onta  wiU 
been  urgued,  nothing  further  relatim-  H  Aftur  mi>’  case  bns 
.nnlcss  requested  by  tbo  tribunal  liiWnetbol"11; bcara 
, caso;  and  all  interviews  for  tliis  n.mL  ?ai°'‘  °f  1,10 
interest  or  their  attorneys,  will  bo  luvmTaVdouielb1^ 
MOTIONS  IN  CONTESTED  CASES. 

to  0tst°b 

scn-cd  upon  tho  opposite  party  or  bis  -  tin-  ’  -  bo 

t  INTERFERENCES. 

wu  may  •isob°  ftMta  ■  “io 

|^2^r:sr,ho“,,cscd“b  u° et 

totofcnmeonU  preliminary  «»«,.< 
tho  iam  a  i  ^°.  sottM  ^,0  primary  examiner,  and 
I8a “?  c,ear,3r  Uellucd;  the  invention  which  is  to  form 
aLtr  °f,  ‘I10  t0,,l,0Vt^  ««■»  •»  ilecided  to  bo 
Patentable,  and  tho  claims  of  tlio  respective  parties  must 
fil  nfim  h  i  COnUiti<m  tbat  tbey  will  not  require  altera- 
uou  af  or  tbo  in  erfereiico  lias  been  finally  decided,  unless 

Mcb  clim'igo^  'CCtl  Ul’°U  U,°  triaI  “botlU1  UOCL‘3s'(ato 
’  1"  "'ill  bo  declared  in  tbo  folio  wiug<cases : 

JW®  conflict  in  wholo  or  in  part. 

two  or  moru  applications  nro  pending  at 
iao  emuo  tmio,  in  euch  of  which  a  like  patentable  invention 
*ZT  ?r,  described,  mid  clafiued  iu  ono  though  not  spe- 

f^ly  claimed  iu  an  of  them. 

>»:.  >ri*'  n"  applicant,  having  been  rejected  upou  an 


umpired  patent,  claims  to  lmvo  rondo  tho  invention  before 
tlio  patentee. 

02.  Tho  fact  that  one  of  tho  parties  has  already  obtained 
a  patent  will  not  provont  an  intorforenco;  for,  although  tho 
Uoininissionor  has  no  power  to  caneol  a  patent  already 
ssued,  ho  may,  if  ho  finds  that  another  person  was  tho 
)rior  invontor,  give  him  a  patont  also,  and  thus  place 
>oth  parties  on  an  equal  footing  beforo  tho  courts  and  tho 
mblie. 

03.  Boforo  tho  declaration  of  an  interference  proper 
irehminary  intorforenco  will  bo  declared,  in  which  the 
irimary  examiner  will  notify  tho  respective  parties  when 
lie  applications  of  tho  other  parties  wero  illcd,  together 
ritli  their  names  and  residences.  Bach  party  to  tho  intcr- 
jrcnco  will  bo  required  to  fllo  a  statement  under  oath 
lving  a  detailed  history  of  tho  invention,  showing  tho 
ato  of  tho  original  conception,  and  tho  dnto  that  tho  ' 
ivention  was  reduced  to  drawings  or  model,  and  tho  dnto 
r  its  completion,  and  tlio  extent  and  character  of  use 
ho  l'nr ties  will  bo  strictly  held  in  their  proof  to  the 
ites  set  up  in  their  preliminary  statements.  This  state- 
cut  must  be  scaled  up  boforo  filing,  (to  bo  opened  only 
r  tlio  examiner  of  interferences,)  and  the  namo  of  the 
irty  filing  it  and  tho  subject  of  the  invention  indicated 
i  the  envelope. 

Tt!,en80nn!rt0mi!nt8  S.Ua"  n0k  10  open  t0  tbo  inspection 
tho  opposing  parties  until  both  havo  boon  died,  or 
ltd  the  time  for  filing  both  has  expired:  nor  then,  mi- 
i  l  r  fan,ined  ^  tb«  proper  officer  and 
rod  to  bo  satisfactory.  At  tho  time  of  tho  oxamina- 
”  preliminary  statements  tho  oxaminer  of  inter- 

f  'u  l  “lso  mnlt0  “n  oxaipination  of  tho  proliin- 
ordor  In  U’f  (.mstitutc<1  by  «'o  primniy  examiner,) 
order  to  ascertain  whether  or  not  tho  issue  between 
parties  lias  been  clearly  defined.  If  it  bo  found, 
such  examination,  that  tho  preliminary  .inning, Hen 
ncndedT  wi thiS  particuIar*  thc  interforonco  will  bo 

amendment.  retUr"°d  10  41,0  ■■ 

fatU“  UP°"'Wl,°m  r08ta  tb0  burden  of  proof  fails  to 
rcome  l?n Stato.raeut'  or  ».««  statement  fails  to  - 
rcomo  tho  primafaae  case  mado  by  tho  respective  dates  , 

nUon  orYi  >  f  8h,0W8  tUat  b0  bas  nbnudoued  his 

8  before  h  !  ‘  ^  ^  iD  Pub,i0  U8b  ‘ban  two  . 

boforo  his  npph cation,  tho  other  party  will  bo  entitled 


bis  application.  The  p °“  Bt * ,lnto  piior 
•bo  used  ns  ovidenco  in  bob" f  of  TT  °a'1  iu  110  ca8a 

aso  is  to  dotormino  whether  the  »  y  "mlti"s  iL  Ita 
.  seeded  with,  and  to  Wo  L  8,laI1  bo  p«>- 

for  tbo  other  party.  8  01  oross-oxnininntion 

fllSeS tU°  tini°  for 

sons  therefor,  in  tho  form  on  v n  P.le80,,t  his  "»■ 

previously  fixed  upon.  «mdu\  it,  prior  to  tlio  day 

whom  rests  tho  lmrdcnIofl'nroo|-eK  by  1,10  "PPUcant  upon 
been  taken  by  such  applicant  tat°.mMCr?ltMt,l"°"y  ba3 ' 
i  liDrille  tlio  time  assigned  to  tl  o  hit  "  °ther  part* 

sidcrcd  closed,  and,  upon  n rot  “  i  i  ’  ,°  C"S°  wiU  bo  c°“' 
of  tho  timo  assiguedPto  such  nni  tV'  ma,]onttl,ooxPirntioii 
set  for  hearing  mtty  bo 

after.  }  ""°  "ot  ,css  tbl">  t«n  days  there- 

provided  in  Rulo  48.  1  °  0  e  tl10  “mmicr 

' rj 

fj^apsasnsras- 

2h  5'EX  iittortbreueo  tho  party  who  flrst  filed  so  o, 

o ,,  p  ,J  m"J  talco  rebutting  testimony,  but  shall  tnko 


18 


no  otlior.  If  tboro  nro  moro  than  two  portion,  tho  times  for 
taking  testimony  will  bo  so  arranged  that  each  shall  have 
.  a  like  opportunity  in  his  turn,  each  being  hold  to  go  forward 
and  provo  his  enso  against  those  who  died  their  application 
before  him. 

'  Postponing tak*  58.  If  it  becomes  necessary  for  either  party  to  liavo  tho 
tng  tutimonv.  (imo  for  taking  his  testimony,  or  for  tho  lionring,  postponed, 
ho  must  luako  application  for  such  postponement,  and  must 
show  sufficient  reason  for  it  by  affidavit  ns  provided  in  little 
113,  died  beforo  tho  timo  previously  appointed  has  clnpscd, 
if  practicable,  and  mast  also  furnish  his  opponont  with 
■  copies  o'f  his  affidavits  and  with  reasonable  notice  of  the 
timo  of  hearing  his  motion. 

Prerequisite  to,  00.  An  intcrforciico  will  not  bo  declared  until  the  subject* 
matter  involved  is  decided  to  bo  pntontnblo.  If  after  being 
declared  it  is  found  that  no  intcrferonco  in  fact  exists,  or 
thnt  thero  has  beon  such  irregularity  in’ declaring  tho  same 
as  will  preoludo  tho  proper  determination  of  tho  question  of 
„  nf  ™  c;s  ln  right  between  tho  parties,  it  will  be  dissolved,-  and  an  appeal 
may  bo  taken  to  the  Commissioner  in  person. 
r  to  of  during  tho  continnnuco  of  an  interference,  it  shall  ap¬ 
pear  thnt  noitlior  party  is  outitlcd  to  a  patent  by  reasou  of 
abandonment,  public  use,  or  any  other  statutory  bnr,  tho 
exnmiuor  of  interferences,  or  examiuors-in-cliicf,  ns  tho  enso 
mny  be,  will  direct  tho  attention  of  tho  Oomtnissionor  to  the 


.  j  a  regular  hearing,  Tho  Commissioner,  if  in  his  judgment  it 

a  is  necessary,  will  then  suspend  tho  iatorforonco  and  remand 

J  the  cases  to  tho  principal  examiner  for  tho  determination  of 

any  of  these  questions. 

If  judgment  bo  bnsed  upon  a  concession  of  priority  by 
cither  of  tho  parties,  such  concession  must  bo  in  writing! 
and  under  tho  signature  of  tho  inventor  himself;  nnd  if  there 
has  been  nil  assignment,  the  assignee  must  join  in  tho  con¬ 
cession.  . 

romun™'’ffiStr  C0-  No  amendments  to  tho  specification  will  bo  received 
during  the  pondoucy  of  an  interference,  oxcopt  ns  provided 
in  section  01.  A  second  interference  will  not  bo  dcclnrcd 
upon  a  now  application  on  tho  same  invention  filed  by  oitlior 
itoi'cariim  tmil’arty  during  tho  pendency  of  an  Interference,  or  nftor  judg* 
«iSS!  “ " cr’ incut,  nor  a  rehearing  bo  granted,  unless  it  be  shown  to  the 
satisfaction  of  the  Commissioner  (in  person)  that  tho  party 
desiring  a  now  interference  or  rchonriug  lias  now  nnd  mate¬ 
rial  testimony  which  ho  could  hot  liavo  procured  in  time 


for  the. hearing,  or  unless  other  sufficient  reasons  bo  si,n„„  ^ 

satisfactory  to  tho  Commissioner.  8  bo  shown, 

"aasSSSSHSrW- 

only  of  tho  specifications  ns  refers  to  the  intorfnrin  i  , 

And  either  party  may,  if  ho  » 

mwaimifolit  o0  h"""?  a<1J"<lge<1"ot  to  interfere,  and  file  a 
now  application  tliercfor:  Provided,  That  tho  claims  so  with- 
drawn  covor  inventions  which  do  not  involve  tho  devices  in 
interference  -.  And  provided  also,  That  tho  devices  in  inter- 

fram  hiq  ,,ow  m 

enso  tho  latter  will  bo  examined  without  rororcuce  to  tho 
intorfcronce  from  which  it  wns  withdrawn. 

REISSUES. 

02.  A  reissue  is  granted  to  tho  original  patentee,  his  legal  iw«inr«,*  „t, 
.  representatives,  or  thonssignecs  of  tho  entiro  intorcst,  wlion,  m“r  n|‘",y  -ror- 
.  by  ronson  of  a  defective  or  insufficient  specification,  or  by 

reason  of  thopnteutcoclnlmingnsliisinvcntiouordiscovory 

moro  than  ho  had  a  right  to  claim  ns  now,  tho  original  pat¬ 
ient  is  inopemtivo  or  invalid,  provided  tho  error  lmsnrison 
from  inadvertence,  accident,  or  mistake,  nnd  without  any 
fraudulent  or  deceptive  intention.  In  tho  cases  of  patonts 
issued  nnd  assigned  prior  to  July  8,  1870,  tho  application 
for  rcisstio  may  bo  made  by  the  nssigneo;  but,  in  tho  enso 
of  patonts  issued  or  assigned  sinco  that  dnto,  thoupplicn- 
tiou  must  bo  made  and  the  specification  sworn  to  by  tho  in- 
j  ventor,  if  ho  be  living. 

03.  Tho  petition  for  a  reissue  riust  bo  accompanied  with  a  wtuu  must  no 
certified  copy  of  the  abstract  of  titlo,  giving  tho  names  of  tK!'5”5'  rctl 
nil  assignees  owning  any  undivided  interest  in  the  patent; 

.  and  in  case  tho  application  is  ninilo  by  tho  inventor,  it  mast 
;  ho  accompanied  with  tho  written  assent  of  such  assignees. 

:*'■ I"  applications  for  roissuo,  under  sovoral  different  divisions, 
a  petition,  onth,  drawing,  and  specification  must  nccotnpntiy 
■  f.  each  division. 

fa,,  01.  Thogcnoral  rule  is,  thnt  whatever  is  really  embraced  w'.«i  mnrni 
K.in  tho  original  invention,  and  so  described  or  shown  that  itmc"'" nlbwc'1- 
i..  digit  t  have  been  embraced  in  tho  original  patent,  maybe 
ijitko  subject  of  a  reissue;  but  no  new  matter  shall  bo  intro- 
induced  into  tho  specification,  nor  shall  tho  model  or  draw- 
.things  bo  amended  cxcopt  each  by  tho  other;  but,  when 
ii  tlicro  is  neither  model  nor  drawing,  amendments  mny  he 
3tj;  made  upon  proof  satisfactory  to  tho  Commissioner  thnt  such 
now  matter  or  nmoiidmout  was  a  part  of  the  original  invon- 


tion,  null  was  omitted  from  tbo  specification  by  inadvertence 
accident,  or  mistake,  ns  aforesaid.  ’ 

J2U2S&  05 •  Eciss“cd  Paints  expire  nt  tl»o  end  of  tbo  term  for 
u°».  which  tbo  original  pntouts  were  granted.  For  this  reason 

applications  for  reissuo  will  take  precedence,  in  cxnmiun. 
tion,  of  original  applications. 

J.taofmt.  GO.  A  patentee  in  reissniug  may,  nt  bis  option,  linvo  a 
separate  patent  for  eaelt  distinct  and  sepnrato  part  of  tbo 
invention  comprehended  in  bis  original  patent,  by  paying 
tko  required  fee  in  each  case,  and  complying  with  the  other 
requirements  of  tho  law,  ns  in  original  applications.  Each 
'division  of  a  reissue  constitutes  the  subject  of  a  separate 
specification  descriptive  of  tho  part  or  parts  of  tho  invention 
clnimed  in  such  division ;  nnd  tho  drawing  may  represent 
only  such  part  or  parts.  All  tho  divisions  of  a  roissuo  will 
issuo  simultaneously.  If  tliero  bo  controversy  ns  to  one,  the 
others  will  ho  withheld  from  issno  nntil  tho  controversy  is 

to°so*  examined  °.7-  T“  1,11  cnscs  of  applications  for  reissues,  tho  original 
anew.  claim,  if  reproduced  in  tho  amended  specification,  is  sub¬ 

ject  to  re  examination,  and  may  bo  revised  nnd  restricted 
in  tho  same  manner  ns  in  original  applications.  Tho  nppU- 
cation  for  a  reissuo  must  bo  accompanied  by  a  surrender  of 
tho  original  patent,  or,  if  lost,  thou  by  an  affidavit  to  that 
effect  anil  a  certified  copy  of  tho  patent;  but  if  any  reissuo 
ho  refused,  tlieongiunl  patent  will,  upon  request,  be  returned 
to  tho  applicant, 

DISCLAIMERS. 

laimcrs.  eg.  Whenever,  by  inndvcrtcnce,  accident,  or  mistake,  tho 
claim  of  iuven tion  hinny  patent  is  too  broad,  embracing  more 
than  thntof  which  tho  paten  tco  was  tho  original  or  first  invent¬ 
or,  some  material  or  substantial  part  of  tho  thing  patented 
being  truly  and  justly  his  own,  tho  patentee,  liis  heirs  or 
assigns,  whether  of  a  whole  or  of  a  sectional  interest,  may, 
upon  payment  of  tho  duty  required  by  law,  make  disclaimer 
ot  such  parts  of  the  thing  patented  ns  tho  disclainiant  skull 
2,00SV°.C  'im01' t0  1,01,1  by  virtuo  tl.6  patenter 
assignment,  stating  therein  tho  extent  or  bis  interest  in 
such  patent ;  which  disclaimer  slinll  bo  in  writing,  nttestod 
£  ir“r''!or'  1  08  cs  8l'«»  I)o  recorded  in  the  Patent 

r  p.fi -d  8,laU  ‘hereafter  bo  considered  ns  part  of  tbo  orig- 

r  h  ,  Re  ification,  to  tbo  extent  of  tbo  intorest  possessed 

rcwnl  thereof14  "Ua  bj’  U‘0S0  Cl"lm,ne  ’"‘dcr  1,iw  "ftCP  tl)0 


the  expiration  of  the  origin*! term £ fl?m 
sinco  March  2, 1801,  can  bo  evtm>,i/,i  n?,°  1>ntont  smntod 
bcon  reissued  in  two  or  more  dlvial'n.  W^ei>  ft  patout  has 
tions  must  bo  made  for  the  oxteii^oTcnob’XisioT11011' 

and  pay  int“o  requisite  fee  not‘ more  Umifsh"  months  nor  r*^“  ^  A 

“oeTrtiflearalr  t0  “,0  of  bis 

raHnn  ^  H  .  oxtonsion  will  bo  signed  after  tho  expi- 

minbcntL,  for  'i  ■  "a1'®1  aro  caution(!l1  to  make  their 

hi  Mkon  H  o  ,  toUT';  1,1  ti,ao  t0  nllow  ‘>*0  testimony  to 
r  TS  to  b0  had’  a,,d  d0ci8io“  mado,  so  that 
tho  final  foo  may  ho  paid  and  tho  certiilcnto  signed  boforo 
tlio  patent  expires;  otherwise,  extension.will  bo  denied. 

I,0rf°1.1  Wh0  inte,lds  t0  oi'l'oso  an  application  for  n»n.on„tr»ni., 
extension  must  givo  notice  of  such  intention  to  tho  applicantor  tt™."1”'^ 
or  bis  attorney  of  record  within  tho  time  hereafter  named,  ^ 
and  furnish  him  with  a  statome.it  of  bis  reasons  of  opposh 

!!m'-,trCr  !•»  "°WiU  1,0  rceardcd  88  a  Party  in  the  case, 
and  will  be  entitled  to  notice  of  tho  time  and  place  of  taking 
testimony,  to  a  list  of  tho  names  and  residences  of  tho  wit- 
■  ”?ssos  wll0S0  testimony  may  have  bcon  taken  previous  to 
■  his  service  of  notico  of  opposition,  anil  to  a  cojiy  of  tho  ap- 
phcatiou  nnd  of  any  other  papers  on  illo,  upon  paying  tho 
cost  of  copying.  Ho  must  also  immediately  file  a  copy  of 
such  notico  nnd  reasons  of  opposition,  with  proof  of  sorvico 
of  tho  same,  in  tho  Patent  Office. 

If  the  extension  is  opposed  on  tho  ground  of  lack  of  nov¬ 
elty  in  the  invention,  tho  reasons  of  opposition  should  con¬ 
tain  a  specific  statement  of  any  nail  all  matter  relied  upon 
for  this  purpose. 

72.  Tho  applicant  for  a  c\tc  tf  1  to  tho  wtati.rcquir- 

Ofilee  a  statement  in  writing,  under  ontli,  of  the  ascertained oaorpcllUoMr' 

.  vnluo  of  tbo  invention,  nnd  of  bis  receipts  nnd  expendi¬ 
tures  on  account  thereof,  both  in  this  anil  foreign  countries. 

.  This  statement  must  bo  mnilo  particular  and  in  detail,  un- 
less  sufllcicnt  reason  is  set  forth  why  suclra  statement  can- 
j  -  not  bo  furnished.  It  must  in  all  cases  ho  filed  with  tho  pe¬ 
tition.  No  exceptions  will  bo  mnilo  to  this  rule. 

Such  statement  must  also  bo  accompanied  with  a  certified 


§§§1 


cou Kfio rod-  73.  The  questions  which  nriso  on  cncli  application  for  an 
prwa  required.  extension  aro : 

First.  Was  the  invention  new  n»d  useful  when  patented? 

Second .,  Is  it  valuablo  and  important  to  tho  public,  nml  to  ' 
wbnt  oxtent? 

■fl’hird.  Has  tlio  inventor  been  reasonably  remunerated  for 
tlio  timo,  ingenuity,  and  expense  bestowed  upon  it,  nud  tlio 
introduction  of  it  into  nso  1  If  not,  has  liis  fniluro  to  bo  so 
remunerated  arisen  from  neglect  or  fault  on  bis  part? 

Fourth.  Wlint  will  bo  tlio  effect  of  tlio  proposed  extension 
upon  tbo  public  interests  ? 

No  proof  will  bo  required  from  tbo  applicant  upon  tbo 
first  question  unless  tbo  invention  is  assailed  upon  those 
points  by  opponents. 

To  enable  the  Commissioner  to  come  to  a  correct  conclu¬ 
sion  in  regard  to  tbo  second  point  of  inquiry,  tbo  applicant 
must,  if  possible,  procure  tbo  testimony- of  persons  disinter- 
.  ested  in  tbo  invention,  wliicli  testimony  should  bo  taken 
under  oath.  This  testimony  must  distinguish  carefully  beticeen 
the  specifto  devices  covered  by  tho  claims  of  the- patent  and  the 
general  machine  in  which  those  devices  may  bo  incorporated. 

In  regard  to  tbo  third  point  of  iuqniry,  in  addition  to  bis 
own  oath,  showing  bis  receipts  and  expenditures  on  account 
of  tbo  invention,  tbo  applicant  mast  bIiow,  by  testimony  un¬ 
der  oath,  that  bo  has  taken  all  rcnsonublo  measures  to  intro- 
dneo  his  invention  into  general  use;  and  that,  without  neg¬ 
lect  or  fault  on  bis  part,  bo  bns  failed  to  obtain  from  tbo  uso 
and  sale  of  tbo  invention  a  reasonable  remuneration  for  the 
time,  ingenuity,  and  expense  bestowed  on  tbo  same,  and 
tho  introduction  of  it  into  nso. 

giving  74.  In  case  of  opposition  to  tbo  extension  of  a  patent  by 
notico.  any  p0r80U)  both  parties  may  take  testimony,  each  giving 
reasonable  notice  to  tbo  other  of  tho  timo  and  piaco  of  taking 
said  testimony,  which  shall  bo  takeu  according  to  tho  rules 
hereinafter  prescribed. 

Ilttm  7S.  A»y  person  desiring  to  oppose  an  extension  must 
privileges.  servo  bis  notice  of  opposition,  nnd  file  his  reasons  therefor, 
nt  least  ten  days  beforo  tho  day  fixed  for  tbo  closing  of  testi¬ 
mony  ;  but  parties  who  have  not  entered  formal  opposition 
in  timo  to  put  iu  testimony  may,  nt -Urn  discretion  of  tbo 
Commissioner,  bo  permitted  to  appear  on  tho  day  of  hear- 
^  iDS’ #nd  mako  nr6«uienttipon  tho  record  in  opposition  to  tho 


grant  of  tho  extension.  But  in  such  case  good  cause  for 
tho  nogleet  to  inako  formal  opposition  must  bo  shown. 

70.  In  contested  cases  no  testimony  will  bo  rccoivcd,  un-  Timsortainug 
less  by  consent,  which  lias  boon  taken  within  thirty  dnyst““'M“ir' 
next  after  tbo  filing  of  tlio  petition  for  tho  extension.' 

77.  Scrvico  of  notice  to  take  testimony  may  bo  mndo  upon  scrvire  at 
applicant,  upon  tlio  opponent,  upon  tbo  nttornoy  of  record  lia°aj?l“li°t“u‘ 
of  cither,  or,  if  tlioro  bo  no  nttornoy  of  record,  upon  nay 
attorney  or  agent  who  takes  part  in  tbo  sorvico  of  notice, 

or  in  tho  examination  of  tbo  witnesses  of  oither  party. 

Where  notico  to  tako  testimony  bns  nlrendy  been  given  to 
an  opponent,  and  a  now  opponent  subsequently  gives  notico 
of  his  intantion  to  opposo,  tbo  examination  need  not  bo  post¬ 
poned,  but  notico  thereof  may  bo  given  to  such  subsequent 
opponent  by  mail  or  by  tologmph.  This  rule,  howovor,  does 
not  apply  to  cx-parte  examinations,  or  tboso  of  which  no 
notico  has  been  given  when  notico  of  opposition  is  sorved. 

78.  In  tho  notico  of  tho  application  for  an  oxtonsion  a  Taking  mu. 
day  will  bo  fixed  for  tbo  closing  of  testimony,  nnd  tho  day  S|“y  “ll  lc?r' 
of  hearing  will  also  bo  named.  Application  for  a  post¬ 
ponement;  of  tbo  day  of  bearing,  or  for  further  timo  for  ’ 
taking  testimony,  must  bo  mndo  and  supported  according 

to  tlio  snmo  rules  ns  arc  to  bo  observed  in  otbor  contested 
cases ;  but  tboy  will  not  bo  granted  in  such  a  manner  as  to 
canso  a  risk  of  preventing  a  decision  prior  to  tbo  expiration 
of  tho  patent.  Immediately  upon  tbo  closing  of  tbo  testi¬ 
mony  tlio  application  will  bo  referred  to  tbo  oxnmiuer  iu  „J',1'r“c0  10 
charge  of  tbo  olnss  to  which  tbo  invention  belongs  for  tbo 
report  required  tiy  law ;  and  said  report  shall  bo  made  not 
less  than  five  dnys  beforo  tbo  day  of  bearing.  As  this  re¬ 
port  is  intended  for  tlio  information  of  tbo  Commissioner, 
neither  tbo  parties  nor  their  attorneys  will  bo  permitted  to 
inako  oral  arguments  boforo  tbo  oxaminer.  In  contested 
cases  briefs  aro  deemed  desirable,  and  tboso  should  always 
bo  filed  at  least  fivo  dnys  boforo  tbo  day  of  bearing. 


79.  A  patent  for  a  design  may  bo  grnutcil  to  any  poison,  i 
whether  citizen  or  alien,  who,  by  bis  own  industry,  genius,"" 
efforts,  and  oxponse,  bns  invented  or  produced  any  now  and 
original  design  for  n  manufacture,  bust,  stntuo,  alto-relievo, 
or  bas-relief;  any  now  nnd  original  design  for  tbo  printing 
of  woolen,  silk,  cotton,  or  other  fabrics;  any  now  nnd  orig¬ 
inal  impression,  ornament,  pattern,  print,  or  picture,  to  be 


printed,  painted,  oast,  or  otherwise  placed  on  or  worked 
into  nay  articles  of  nmiiufaeturo;  or  any  now,  useful,  and 
original  slmpo  or  configuration  of  nny  nrticlo  of  manufac¬ 
ture,  tlio  samo  not  having  been  known  or  used  by  otliors 
boforo  his  inrontion  or  production  tiicrcof,  or  patented  or 
described  in  any  printed  publication,  upon  pnyinout  of  tlio 
duty  required  bylaw,  and  othordno  proceedings  had  tlio 
same  as  in  cases  of  inventions  or  discoveries. 

1  SO.  X’atents  for  designs  nro  granted  for  tlio  torm  of  tlireo 
and  one-half  years,  or  for  seven  years,  or  for  fourtcon  yonrs, 
as  the  applicant  may,  in  his  application,  elect, 
i  81.  Tho  proceedings  in  applications  for  pntouts  for  de¬ 
signs  nro  substantially  tlio  samo  as  for  other  patents.  The 
specification  must  distinctly  point  out  tlio  characteristic 
features  of  tlio  design,  and  carefully  distinguish  botween 
wlmt  is  old  and  what,  is  held  to  bo  now.  Tlio  claims  also 
should  bo  as  distinct  and  specific  as  in  tlio  caso  of  patents 
for  inventions  or  discoveries. 

1  82.  When  tlio  design  can  bo  sutllciently  represented  by 
drawings  or  photographs  a  model  will  not  bo  required. 

.  S3.  Whenever  a  photograph  or  an  engraving  is  employed 
to  illustrnto  the  design,  it  must  bo  mouutcd  upon  a  thick 
Uristol-board  or  drawing-paper,  ten  by  llftccn  inches  .in 
size;'  and  tlio  applicant  will  bo  roqutred  to  furnish  toil  oxtrn 
copies  of  such  photograph  or  engraving,  (not  nionntod,)  of 
a  sizo  not  exceeding  seven  and  a  half  inches  by  cloven. 
Negatives  will  no  longer  bo  required. 

■Whenever  tho  desigii  is  represented  by  a  drawing,  each 
of  tlio  ton  copies  mast  bo  made  to  conform  as  nearly  as 
possiblo  to  tlio  rules  laid  down  for  drawings  of  mechanical 
inventions. 

TRADE-MARKS. 

,  SI.  Any  person  or  (Inn  domiciled  in  the  United  States, 
"and  any  corporation  created  by  tho  authority  or  tlio  United 
States,  or  of  any  State  or  Territory  thereof,  and  any  per¬ 
son,  drill,  or  corporation  resident  of  or  located  in  any  foreign 
country  which,  by  treaty  or  convention,  nllbrds  similar 
privileges  to  citizens  of  tho  United  States,  null  who  nro  en¬ 
titled  to  tho  oxclusivo  uso  of  nny  lnnTal  trade-mark,  or  who 
intcud.  to  adopt  and  uso  nny  trade-mark  for  oxclusivo  uso 
within  tlio  United  States,  may  obtain  protection  for  such 


lawful  trade-mark  by  complying  with  the  following  require- 
'  meats,  to  wit :  • 

First.  By  causing  to  bo  recorded  in  tho  Patent  Olllco  tho  rrcoomtog 
names  of  tho  parties,  and  their  residences  anil  place  of  busi- 
ness,  who  desire  tho  protection  of  tho  trade-mark. 

Second.  Tho  class  of  merchandise  and  the  particular  de¬ 
scription  of  goods  comprised  in  such  class,  by  which  tho 
trailo-mark  lias  been  or  is  intended  to  bo  appropriated. 

Third.  A  description  of  tlio  trade-mark  itself,  with  fac¬ 
similes  thereof,  and  tlio  moilo  in  which  it  has  heon  or  is 
intended  to  bo  applied  and  used. 

Fourth.  Tho  length  of  time,  if  nny,  daring  which  tho 
trado-mark  lias  been  used. 

Fifth.  Tlio  payment  of  a  feu  of  twonty-ilvo  dollars,  in  tlio 
samo  manner  and  for  tlio  samo  purpose  ns  tlio  feo  required 
for  patents.  A  r 

Sixth.  Tlie  compliance  with  such  regulations  ns  may  bo  .  ■j.j" 
prescribed  by  tho  Commissioner  of  Patents.  H 

Sccenth.  Tlio  tiling  of  a  doclarntion,  under  tlio  oath  of  H: 

tlio  persou,  or  of  somo  uiotnbcr  of  tho  Arm  or  ofllcor  of  the  H 

corporation,  to  tho  effect  thnt  tho  jmrty  clniiningprotcctioii  Bl 

for  tho  trade-mark  hns  a  right  to  the  uso  of  tlio  samo,  and  -  H| 
thnt  no  other  person,  Arm,  or  corporation  hns  n  right  to  such  H 

use,  citlior  in  tho  idcuticnl  form  or  having  such  near  resem-  H 

bianco  thereto  ns  might  ho  calculated  to  dcccivo,  and  thnt  H 

tho  description  and  fac-siiniles  prc3ontcd  for  record  nro  true  II 

copies  of  tho  tnulo-mnrk  sought  to  bo  protected.  Tlio  ontli  ■»  "s 
must  also  stato  tho  domicile  and  citizenship  of  tlio  person 
desiring  registration. 

Thepotitionnsking  for  registration  should  bonecompnnicd 
with  a  distinct  statement  or  specification,  setting  forth  tho 
length  of  time  the  trade-mark  has  been  used,  tho  moilo  in 
which  it  is  intended  to  apply  it,  and  the  particular  descrip¬ 
tion  of  goods  comprised  in  tlio  class  by  which  it  has  been 
appropriated,  and  giving  a  fall  description  of  the  design 
proposed,  particularly  distinguishing  between  tlio  essential 
and  tho  non-essential  features  thereof. 

S3.  Tlio  protection  for  such  trade-mark  will  remain  in 
forco  for  thirty  years,  and  may,  upon  tho  payment  of  a  sce- 
-  ond  fee,  bo  renowetl  for  thirty  years  longer,  except  in  cases 
where  such  trade-mark  is  claimed  for,  and  applied  to,  nrti- 
••  cles  not  manufactured  in  this  country,  and  ill  which  it 
•  receives  protection  under  tho  laws  of  nny  foreign  country 
for  a  shorter  period,  in  which  caso  it  shall  ccaso  to  Imyo 
,  forco  in  this  country,  by  virtno  of  tho  registration,  at  the 
sauio  time  thnt  it  becomes  of  no  effect  elsewhere. 


80.  No  proposed  trade-mark  will  be  reccivod  or  recorded 
which  is  not  nncl  cannot  become  a  lawful  trade-mark,  or 
which  is  meroly  tho  ua.no  of  a  porson,  firm,  or  corporation 
only,  unaccompanied  by  a  mark  sufllciont  to  distinguish  it 
from  tho  sn.no  nnmo  when  used  by  otl.cr  porsous,  or  winch 
is  identical  with  a  trade-mark  appropriate  to  tho  sa.no  class 
of  merchandise  .and  bolonging  to  a  different  owner,  and 
already  registered  or  rocoivcd  for  registration,  or  which  so 
nearly  resomblos  such  last-montioned  trndo-mnrk  ns  to  be 
likely  to  dcceivo  tho  -public ;  but  any  lawful  trndo-mnrk 
rightfully  used  lit  the  ti.no  of  the  passage  of  tho  act  relating 
to  trade-marks  (July  8, 1870)  may  bo  registered. 

.»  AH  applications  for  registration  nro  referred  in  tho  first 
•  ■  --  -  ♦-'ide-mnrk  examiner.  From  ndverso  decision 


Cnitcd  States  for  moro  turn  two  years  pr.oi  ro  urn  up 
.  but  when  a  patent  is  taken  out  iu  this  country 
invention  previously  patented  abroad,  tho  American  i 
will  expire  at  the  same  timo  with  tho  foreign  patent 
there  bo  moro  than  one,  nt  tho  same  timo  with  the  ou 
log  tho  shortest  term;  but  in  no  enso  shall  it  bo  m 
more  than  seventeen  years. 

.  go  When  application  is  mmlo  for  n  patent  for  an 
tion  which  has  been  already  patented  abroad,  the  iu 
will  bo  required  to  inako  oath  that,  according  to  tho 
his  knowledge  mul  bolief,  tho  same  lias  not  heen  iu 
aso  in  tho  United  States  for  more  than  two  years  p 
tho  application  in  this  country. 

01.  An  applicant  whoso  invention  has  been  p. 
abroad  should  state  tho  fact  that  a  foreign  patent  l.r 
ally  been  obtained,  giving  its  date,  and  if  there  h 
-  than  ono,  tbo  date  of  each. 


ay  instrument  ot  writing,  nuu  sucu  n-rugni 
:dcd  in  tho  Patent  Oflleo  within  sixty  day 
ution,  in  default  of  which  it  shall  bo  void 
subsequent  purchaser  or  mortgagee  for  a  v» 
ration,  without  notice.  The  lees  will  bo  tl 
irescribed  for  recording  assignments  of  pate 
FOREIGN  PATENTS. 

I.  Tho  taking  out  of  a  patent  iu  a  foreign  e 
prejudice  a  patent  previously  obtained  her. 
i-oven t  obtaining  a  patent  hero  subsequently 


imo  within  ouo  year  thercalter, : 
patout  with  which  such  cavcal 
orferc,  such  application  will  1 
hereof  will  bo  scut  to  tho  perse 
io  shall  mo  a  complcto  applical 
time,  will  bo  entitled  to  an  into 
application,  for  tho  purpose  of  pr 
and  obtaining  tho  patent,  if  ho  b. 
or.  Tho  caveator,  if  ho  would  a 
must  fllo  his  application  within 
on  which  tho  uotico  to  him  is  dc 
Washington,  adding  tho  regiila 
orthosamo  to  him;  and  tho  d 
expires  will  bo  uiontioncd  in  the 

93.  Tho  caveator  will  not  bo  . 
plication  ponding  nt  tho  tiuiool 
application  filed  after  the  exp. 
dnto  of  filing  tho  caveat ;  but 


i  and  so  on  from  year  to  year  as  long  as  ho  may  desire  If  a 

/  “led "it  TV‘  tl,0,C"d  0f  tbo  yenr  for  Which  it 

f  .  nrchives  df  tho  Ofllco  801'  ^  rC8"rded  "S  ,n  ,ho  “«* 

°f  "  oml: l*0, ,C1,VCnt  Cnu  bo  /1Ic'1  secret  archives  of  the 
OOlco  unless  accompanied  l,y  an  oalh  of  the  caveator  that 
ho  is  a  citizen  of  the  United  States  or  ir  lm  i,  „„ 

Statra,Oni,niSir0Sit,CdifOr  onoycarln8t  Pnstwithin  tho  United 
Stntes,  and  lias  inndo  oath  of  Ills  intention  to  bccomo  a  citi- 

f  lint  l.nTu  ,10r  11".,eS3 1,10  ■''IMdicant  also  states,  under  oath 

tho  nrt°  inacldnn  S°'f  11,0  0risi,,nI  aa"  «**  inventor  of 
art,  niaohmo,  or  improvomont  sot  forth  in  ids  caveat. 

loTcutJoa  ivquirf  •  A  cai' 'eat  need  not  contain  11s  nnrfimiiun  .1  • 

SSr-SS: 

vtzss* 

"»«■* 
^amiof  the 


assignments. 


tom  to  an  nssi^fecrln^nsjiV,1,^^0'1  ‘bat  Patent shall „ 
.101.  When  tho  patent  is  to  issnn  1,.  .1 

ps&ss corrc8I,OMdc,,co  ■« 

vcy  an  exclusive  right  co„.*““'^"- 

spedded  portion  of  tho  United 

ssssssszrrr*zsstt 

patoluol,n,!lCd'rmr  ™ry  soimr,,^°  dghts  under  his 
»  vc y  rhoria.  o'  T  biH  iuVOMion>  ”  »«  »nySlf  L”  ~ 

ri  L  sllol>  r,8llt3  which  are  not  exclusive 

^.  convoy.,,, cos  are  mere  licenses,  and  need  not  bo  re 

10a.  Tlie  receipt  or assignnionts  is  not  generally  nckuou  l  „  ,  , 

S  ^  t,“!  °mCU;  tllcy  "•il1  <»  recorded  in  thet  turn f«”  f 


’"’tlsIpSSsH 

for  record.  0  ,  0^  l>r°per  subject-matters 


OFFICE  FEES,  AND  HOW  PAYABLE. 

10#.  Nearly  all  tho  fees' payablo  to  tho  Patent  Ofllco  aro  1 
0Do  „  iLre(|,,'rCd,.bi'  l“"'tO  b0  ',ail1  *»  advance;  that  is, “l 
P?n  making  application  for  any  action  by  tho  Offlco  for 
Wiich  a  fee  is  payable.  For  tho  sake  of  uniformity  and  con- 
Yeuionce,  tho  remaining  fees  will  bo  required  to  bo  paid  in 
wesnmo  manner. 

(inmi  Tho  fol,owiMe is  “10  tariff  of  fees  established  by  law :  t 
§i,  "g  ovory  application  for  a  design  patent  for 
/nreo  years  mid  six  months .  $10  00 


On  filing  every  application  for  a  design  patout  for 

sovou years  . . . . 

On  tiling  over}' application  for  a  design  patent  for 

fourteen  years . 

On  tiling  every  caveat . . . 

On  tiling  every  application  for  a  patent  for  nil  inven¬ 
tion  or  discovery . 

On  issuing  each  original  patent  for  an  invention  or 

discovery . . . 

On  tiling  a  disclaimer . . 


uiuc.  wiso  an  extra  charge  will  bo  made  for  llio  time  con- 
sinned  in  making  any  sonrcli  that  may  bccomo  necessary. 

108.  Tlio  ilnnl  fco  upon  a  patent  must  bo  paid  within  six 
months  after  tlio  time  at  which  tlio  application  was  allowed 
and  notico  thereof  mailed  to  tlio  applicant,  or  his  agent! 
anil  if  tlio  final  foe  for  such  patent,  or  a  ccrtillcato  of  de¬ 
posit  for  tlio  amount,  bo  not  received  at  the  Oillco  within 
that  time,  tlio  patent  will  bo  forfeited,  and  tlio  invention 
tkorcin  described  will  bccomo  pnblio  property,  ns  ngniust 
the  applicant  therefor,  unless  he  shall  make  a  now  applica¬ 
tion  within  two  years  from  the  date  of  notice  of  tlio  original 
allowance. 

109.  The  money  for  tho  payment  of  fees  may  bo  paid  to 
the  Commissioner,  or  to  tho  Treasurer  or  any  of  tho  Assist¬ 
ant  Treasurers  of  tho  United  States,  or  to  any  of  tho 
designated  depositaries,  nntiounl  banks,  or  receivers  ol 
public  money,. designated  by  tlio  Secretary  of  tho  Treasury 
for  that  purpose,  who  shall  givo  tho  depositor  a  receipt  or 
certificate  of  deposit  therefor,  which  sli  ill  lie  transmitted 
to  tlio  Pntont  OlUce.  When  this  cannot  bo  dono  without 
much  inconvenience,  tho  money  may  be  remitted  by  mail, 
and  in  ovory  such  enso  tho  letter  should  stato  tho  oxact 
nmonut  inclosed.  Letters  containing  money  may  bo  regis¬ 
tered.  Post-Ofiico  money-orders  now  afford  a  safe  and  con¬ 
venient  modo  of  transmitting  fees.  All  such  ordors  should 
bo  mndo  payable  to  tho  “  Commissioner  of  Patents.” 

The  weekly  issue  will  closo  on  Saturday  at  12  o'clock. 
When  patents  nro  to  issuo  to  nssigi  _e  l  gnment 


KEPAYMENT  OP  MOIilSi. 

111.  Monoy  paid  by  actual  mistake  will 
a  mere  chango  of  purpose  after  tho  pnymi 
not  ontitlo  a  party  to  domand  such  return 


112.  After  the  first  day  of  July,  1873,  t 
matter  sent  to  tho  Potent  Ofllco  by  mail  in 
given  |  fug,  othonviso  it  will  not  bo  received. 


TAKING  AND  TRANSMITTING  TESTIMONY. 

113.  In  extension,  interference,  ami  other  contested  cases, 
the  following  rules  have  been  established  for  taking  and 
transmitting  ovidoilco : 

First.  Bel'oro  tho  deposition'  of  iv  witness  or  witnesses 
is  taken  by  cither  party,  dnb  notice  shall  bo  given  to  tho 
opposito  party,  as  hereinafter  provided,  of  tho  Unto  and 
plnco  when  and  wlioro  such  deposition  or  depositions  will 
ho  taken,  with  tho  names  and  residences  of  tho  witness  or 
witnesses  then  and  tliero  to  bo  examined,  so  that  tho  oppo¬ 
site  party,  cither  in  person  or  by  attorney,  shall  havo  full 
jpportunity  to  cross-examine  tho  witness  or  witnesses : 
Provided,  That  if  tho  opposito  party,  or  his  counsel,  be 
‘dually  present  at  tho  taking  of  testimony,  witnesses  not 
lamed  in  tho  notico  may  bo  examined,  bnt  not  otherwise; 
md  that  neither  party  shall  tnko  testimony  in  more  than 
>110  place  at  the  samo  time,  nor  so  nearly  at  tlio  samo  time 
is  not  to  allow  reasonable  time  to  travel  from  ouo  plnco  of 
ixainination  to  tho  other. 

Second.  Tho  notico  for  taking  testimony  must  bo  served 
>y  delivering  a  copy  to  tho  adverse  party,  or  bis  agent  or 
ittorney  of  record  or  counsel,  ns  provided  in  Kulo  77,  or  by 
caving  a  copy  at  tho  party’s  usual  placo  of  residenco  with 
oino  member  of  tho  family  who  has  arrived  at  tho  years  of 
liscrction,  or  by  leaving  tho  samo  at  tho  oillco  of  tho  uttor- 
oy;  and  such  notico  shall,  with  proof  of  service  of  the  same, 
ml  a  certificate,  duly  sicorn  to, giving  the  manner  and  time  of 
talcing  the  service,  bo  attached  to  tho  deposition  or  doposi- 
ions,  whether  tho  party  cross-examine  or  not. 

Third.  Tho  magistrate  before  whom  tho  deposition  is 
ikon  must  append  thereto  his  ccrtillcatc,  stating  tho  time 
nd  plnco  at  which  it  was  taken,  tho  nnmo  of  tho  witness, 
jo  administration  of  tho  oath,  at  whoso  request  tho  testi- 
lony  was  taken,  the  occasion  upon  which  it  is  intended  to 
o  used,  the  names  of  tho  adverse  party,  (if  any,)  and 
hethcr  they  wore  present;  and  immediately  upon  the  close 
'  the  examination  ho  shall  securely  sent  up  nil  thoovidenco, 
c.,  and  forward  tho  smite  forthwith  to  tho  Commissioner  of  ' 
itcuts,  making  upon  tl 
lo  of  tho  case  and  tho 
ckngc. 

Fourth.  In  cases  of  extensiou 
ido,  cxmirte  testimonv  will  l«, 


been  taken  by  tho 
11  bo  received,  un- 


; 

witnesses  withm  tho  stipulated  time,  it  shall  bo  Z  w, 
said  party  to  give  notico  of  tho  same  to  he  Co  miS 

cause  of  such  inability,  and  of  tho  names  of  such  icit/es, 
fCPCelC,%  10  h°  pr0ml  %  them,  and  of 
lTr  ,“Ch  lCmi  tttlm  ‘"VWomM  testimony,  ail 
r  TZ  T  Cff°rlS  have  hcm  ^  Procure  , 

winch  notico  to  tho  Commissioner  shall  bo  received  by  h 
previous  to  the  day  of  honriug  aforesaid.  Copies  of  t 
papers,  and  notico  of  any  motion  based  upon  them  ini 
Bute  50  8enC<l  "P°n  tllC  °1,posito  P“rty>  113  Provided 
Sixth.  Whenever  a  party  relies  upon  a  caveat  toesta 
iisli  tho  dato  of  his  invention,  tho  caveat  itself  oraccr 
iled  copy  thereof,  must  bo  filed  in  evidence,  with’  duo  uoti 
nm  °  °P11°Slt°  pnrty'  as  no  uotice  ran  bo  taken  by  tl 
Oillco  of  a  caveat  filed  in  its  secret  archives. 

Tlio  official  records  of  tho  Ofilco,  and  books  and  doc 
meats  contained  in  tho  library,  and  other  books  in  goner 
circulation,  mny  bo  used  at  tho  hearing ;  but  notico  of  ai 
special  matter  contained  therein,  upon  which  a  party  relic 
•  should  bo  given  to  tlio  opposito  party  previous  to  tho  dr 
set  for  closing  testimony. 

111.  Tho  folios  of  each  deposition  must  bo  numbered  coi 
socutively,  and  tho  nnmo  of  tho  witness  bo  plainly  and  coi 
spicnonsly  written  at  tho  top  of  each  folio.  It  is  deemc 
desirable  that  tho  testimony  bo  taken  upon  legal-cap  pope: 
with  a  wido  margin  on  tho  left-hand  sido  of  tho  page,  an 
that  only  one  sido  of  tho  sheet  bo  written  upon. 

.  W®.  TI»o  testimony  mny  bo  taken  in  narmtivo  form;  bul 
if  either  party  desires  it,  it  must  bo  taken  in  answer  to  in 


taken  anil  filed  in  compliance  with  llicso  rules;  but  no 
notico  will  be  taltoii  of  any  merely  formal  or  technical 
objection  which  shall  not  appear  to  havo  wrought  a  sub¬ 
stantial  injury  to  the  party  raising  it;  anil  in  such  case  it 
should  bo  made  to  appear  Hint,  ns  soon  ns  tho  party  became 
aware  of  the  objection,  ho  immediately  gave  notico  thereof 
.  to  tlio  Office,  and  also  to  tho  opposite  party,  informing  him 
at  tho  same  time  that,  unless  corrected,  ho  shall  urge  Ids 
objection  at  tho  hearing;  hut  this  rulo  is  not  to  bo  con¬ 
strued  so  ns  to-  modify  well-established  rules  of  evidence, 
which  will  bo  applied  strictly  in  all  practice  beforo  the 
Olllee. 

r  117.  Tho  law  requires  the  clerks  or  tho  various  courts  of 
the  United  States  to  issue  subpomas,  to  sccuro  tho  attend¬ 
ance  of  witnesses  v ' 
in  evidence  in  any  c 

•  1 18.  In  contested  cases,  whether  of  interference  or  of  ex¬ 
tension,  parties  may  have  access  to  tho  testimony  on  filo 
prior  to  tho  hearing,  in  preseneo  of  tkooffleer  in  charge; 
and  copies  may  bo  obtained  by  them  at  tho  usual  rates, 
a  As  a  general  rule  printed  copies  or  tho  testimony  will  bo 
required,  but  this  requirement  may  bo  dispensed  with  on 
special  application  to  tho  Commissioner,  and  showing  satis¬ 
factory  reasons  therefor. 

Tlireo  printed  copies  should  bo  furnished,  two  for  tho  use 
of  tho  Olllee  anil  pno  for  the  use  or  the  opposing  party, 
llieso  copies  must  bo  filed  not  less  than  ono  week  provions 
to  tho  day  of  hearing. 

It  is  also  desirable  that  all  arguments  should  be  submitted 
in  printed  form,  and  all  arguments  filed  at  least  two  days 
provions  to  the  dny  of  hearing. 

RULES  OF  CORRESPONDENCE. 

110.  All  correspondence  must  bo  in  tho  nnino  of  tho 
“  Commissioner  of  Patents,”  and  all  letters  and  other  com¬ 
munications  intended  for  tho  Onico  must  bo  nddresscil  to 
mn;  ami  alter  July  1,  1873,  postage  must  bo  prepaid  in 
all.  I  f  addressed  to  any  or  tho  other  officers  of  tho  Bureau 
they  will  not  bo  noticed,  unless  it  bo  scon  that  tho  mistnko 
was  owing  to  inadvertence.  A  separate  letter  should  in  every 
cim  bo  written  in  relation  to  each  distinct  subject  of  inquiry  or 
mlication,  tho' subject  or  tho  invention  and  tho  dnto  of 
Wing  being  always  cnrofully  noted. 


120.  When  an  agent  lias  filed  his  powor  of  nttomc\  ilul  c  n- 
executed,  the  correspondence  will,  in  ordinary  cases,  bo  held  SSttSillrSfui 
with  him  only;  and  a  double  correspondence  with  an  as-1'8”0’™1- 
signee  and  the  inventor,  or  with  an  attorney  anil  his  prin¬ 
cipal,  if  goderally  allowed,  would  largely  increase  tho  labor 

of  the  Olllee.  The  assignee  of  an  cutiro  interest  in  an  in¬ 
vention  is  entitled  to  hold  correspondence  with  tbcOfllco 
to  the  exclusion  of  tho  inventor. 

121.  If  the  principal  becomes  dissatisfied  he  must  revoke  ifprincipauu. 
his  power  of  nttornoy  and  notify  the  Olllee,  which  will  then“iMpoVcr.,t"' 
communicate  witli  him. 

122.  After  a  second  rejection  nono  of  tho  papers  can  bo  in«pcction  ^ 
inspected,  save  in  tho  preseneo  of  n  sworn  oQlccr;  nor  will EnSeJ “cuon.”' 
any  of  the  papers  bo  returned  to  tho  applicant  or  agent. 

123.  Whenever  it  shall  bo  found  that  two  or  more  parties 
whoso  interests  aro  in  conflict  nro  represented  by  tlio  same 
attorney,  tho  examiner  in  charge  will  notify  each  of  said  c 
principal  parties,  mid  also  tlio  attorney,  of  this  fact. 

12-1.  Asidofrom  tlio  caveats,  which  aro  required  by  law  k  ArjHc 
to  bo  kept  secret,  all  pending  applications  are,  as  far  as 
practicable,  preserved  in  like  secrecy.  No  information  w  ill 
therefore  bo  given  tlioso  inquiring  whether  any  particular 
enso  is  before  tho  Office,  or  whether  any  particular  person 
has  applied  for  a  patent. 

125.  But  information  is  given  in  relation  to  any  enso  after  ^sgt  »i 
a  patent  has  issued,  or  after  a  patent  has  been  refused,  and  ”r“  " 1 
tho  further  prosecution  of  tho  application  is  nbaudouod  or 
barred  by  lapse  of  time. 

120.  Tho  models,  in  such  -cases,  are  so  placed  as  to  bo  snb-  (ijA™  u 
jeet  to  gouoral  inspection.  The  specifications  and  drawings 
in  any  particular  enso  enn  bo  seen  by  any  one  having  par- 
'  ticu’lnr  occasion  to  examine  them,  and  copies  thereof,  as  well 
as  of  patents  granted,  will  bo  furnished  at  tho  cost  of  mak¬ 
ing  them.  Copies  will  bo  made  on  parchment,  nt  tho  request 
of  tho  applicant,  on  liis  paying  tho  additional  cost. 

127.  Even  after  a  case  is  rejected,  tiio  application  is  re- 
gardod  ns  pending,  unless  tlio  applicant  allows  tho  matter  tma«! 
to  rest  for  two  years  without  taking  any  further  steps  there* 
in,  in  which  caso  it  will  bo  regarded  ns  abandoned,  and  will 
no  longer  bo  protected  by  any  rulo  of  secrecy.  Tho  spcci 
cations,  drawings,  and  modol  will  then  bo  subject  to  inspec¬ 
tion  in  tho  same  manner  as  those  of  patented  or  withdrawn 
;  Applications. 


tmfxfnr.ii*  12S-  Informatiou  iu  relation  to  pending  eases  is  given  so 
wb'tn  given.  far  as  it  becomes  necessary  in  conducting  the  business  of  tlio 
OHico,  but  no  further.  Tims,  when  an  interference  is  do- 
.  dared  between  two  pending  applications,  each  of  the  con¬ 
testants  is  entitled  to  n  knowledge  of  so  much  of  bis  oppo- 
,  neat’s  ease  ns  to  enable  him  to  conduct  ids  own  uiidcrstnud- 
ingly. 

aimtailSi™"."™  12a'  11,0  onlco  cnuuot  respond  to  inquiries  ns  to  the  nov- 
i“™“flti«cnrt>i»  eI,y  of  1111  all°80<1  invention  in  advance  of  an  application  for 
general.  a  patent,  nor  to  inquiries  founded  upon  brief  and  imperfect 
descriptions,  propounded  with  a  view  of  ascertaining  whothcr 
such  alleged  improvements  linvo  been  patented,  nml  if  so, 
to  whom ;  nor  can  it  act  ns  an  expounder  of  the  patent  law, 
nor  ns  counselor  for  individuals,  except  as  to  questions  aris¬ 
ing  within  tbo  Omcc.  A  copy  of  the  rales,  with  this  sec¬ 
tion  marked,  sent  to  the  individual  making  an  inqniry  of  tlio 
character  referred  to,  is  intended  ns  a  respectful  answer  by 
tlio  Office. 

Tvia. a"oV”w  130>  AU  business  with  the  Office  should  bo  transacted  in 
i»in  “mins,  writing.  Unless  by  tbo  consent  of  nil  parties,  the  action  of 
.the  Offico  will  bo  based  exclusively  on  the  writton  record. 
No  attention  will  bo  paid  to  any  alleged  verbal  promise  or 
understanding,  in  relation  to  which  llicro  is  any  disagree¬ 
ment  or  doubt. 

ATTORNEYS. 

Aitorcpya.  131.  Any  person  of-intelligcnco  and  good  moral  character 
may  appear  ns  tlio  ngont  or  the  attorney  in  fact  or  an  appli¬ 
cant,  upon  "filing  a  proper  power  of  attorney.  As  the  value  ' 
of  patents  depends  largely  upon  tlio  careful  preparation  of 
'  ^*o  specification  and  claims,  the  assistance  of  competent 

counsel  will,  iu  most  cases,  bo  of  advantage  to  the  applicant, 
tort tIia  value  of  their  services  will  bo  proportioned  to  their 

/skill  and  honesty.  So  many  persons  have  entered  this  pro¬ 
fession  of  late  years  without  experience  that  too  much  caro 
cannot  bo  exercised  iu  tbo  selection  of  a  competent  man. 
The  Office  cannot  nsstnno  responsibility  for  tlio  nets  of  attor¬ 
neys,  nor  can  it  assist  applicants  in  making  a  selection.  It 
will,  however,  bo  a  safe  rule  to  distrust  those  who  boast  of 
the  possession  of  special  and  peculiar  facilities  in  the  Offico 
for  procuring  patents  iu  a  shorter  time  or  with  more  ex¬ 
tended  claims  than  others. 

toraoy'Vir ..m  Po"'ora  of  ““oruey  to  authorise  the  attorney  to  sub- 
«*•  statute  for,  or  associate  with,  himself  a  second  agent,  must 

contain  a  clause  of  substitution ;  but  such  powers  will  not 
authorise  tlio  second  agent  to  appoint  n  third. 


r“  i,ltcrvi“'vs  with  oxniii  i  ers  wi  l  be  ais' 

'STM  iu 

with  tbo  ®3i™'''S‘t'kldecomn^ 

;=KfS2SSKS5:rrH 

case;  and  for  lesser  offenses  attorneys  may  bo  reffised  tlm 
privilego  of  ornl  interviews,  and  bo  required  to  transaotall 
business  with  tlio  Offico  in  writing.  1  1 

;  ^5' As  ,nc™tors  of  Congress  cannot  examine  cases,  or  T.  ,, 

not  m  them  without  regular  powers  of  attorney,  and  as  cases  ’i 
™““0t  b°  t”kc"  ,,p  °frt  of  their  regular  order  upon  their  E5c““"*™”™s; 
reqet  ul  tie  loi  j  t  tt  g  papers  to  and 
from  the  Capitol  involves  a  loss  of  time  which  would  bo 
avoided  by  communicating  directly  with  tlio  Officii,  appli- 
cants  are  recommended  not  to  add  to  the  sufficiently  ardu- 
oils  duties  of  their  Representatives  by  ordering-copies  or  ' 
*hciiiU>tl"e  f°  tlllllS1,0t  bnsillcss  with  the  Office  through 
LIBRARY. 

136.  No  persons  are  allowed  to  tnko  books  from  the  library  iibrarjrtsnia. 
except  thoso  employed  in  tlio  Office.  ‘  °M' 

AU  books  taken  from  tlio  library  must  bo  entered  in  n 
register  kept  for  the  especial  purpose,  and  returned  on  tbo 
call  of  tlio  librarian. 

Any  book  lost  or  defaced  must  be  replaced  by  another. 

"  -Patentees  and  others  doing  business  with  the  Offico  can 
oxnmiuo  tlio  books  only  in  tho  library-hall  or  tlio  attorney’s 
room  in  tho  Ofilce. 

^  All  translations  will  be  made  at  tho  usual  rates  by  tho 

No  person  will  bo  allowed  to  mnko  copies  or  tracings  from 
works  in  tho  library.  Such  copies  will  bo  furnished  at  tho 
U6iinl  rates. 


Approved. 

0.  Delano, 

Secretari/  of  the  Interior. 


APPENDIX  OP  POPJIS. 


To  the  Commissioner  of  Patents : 

Your  petitioner,  a  resident  of - , - ,  prays  that  letters  patent 

bo  grautcil  to  him  for  tlio  invention  sot  forth  in  tho  nnncxod  specification. 


To  tho  Commissioner  of  Patents  ; 

Yonr  petitioners,  residing  respectively  in. - ,  — - ,  and - , 

- ,  pray  that  letters  patent  mny  bo  granted  to  them,  as  joint  invent¬ 
ors,  for  tlio  invention  sot  forth  in  tho  annexed  specification. 


To  the  Commissioner  of  Patents : 

Your  petitioner,  arcsidontof- - ,  prays  that  letters  patent  may 

bo  granted  to  himself  and  0.  D.,  of - ,  as  his  assignee,  for  tho  inven¬ 

tion  sot  forth  in  tlio  annexed  specification,  the  assignment  to  tho  said  0. 
D.  having  been  duly  recorded  in  tho  Patent  Office,  in  liber  — ,  pag^ 

4.  By  an  administrator. 

To  the  Commissioner  of  Patents: 

Yonr  petitioner,  A.  B,  of - ,  - - ,  administrator  of  the  estate 

of  0.  D.,  deceased,  (ns  by  reference  to  tho  duly-certified  copy  of  lottos 
of  administration,  hereto  annexed,  will  more  fully  appear,)  prays  that 
letters  patent  may  bo  granted  to  him  for  the  invention  of  the  said  0. 

D..  sot  forth  in  tho  annexed  specification. 

*  A.  B.,  Administrator,  ivc. 


To  tho  Commissioner  of  Patents : 


executor  of  tho  last  will  and 


of  letters  testamentary,  hereto  annexed,  will  more  fully  appear.)  nmra 
Hint  letters  patent  may  ho  granted  to  him  for  tlio  invention  of  the  said 
0.  D.,  sot  forth  in  the  annexed  specification.  u 

A.  B.,  Executor,  ,0c. 

0.  Poll  A  REISSUE,  (nv  THE  INVENTOR.) 

To  the  Commissioner  of  Patents  : 

Your  petitioner,  of - , - .prays  that  he  may  ho  allowed  to 

to  iZ  M  ra  S  P“,t0,"i  t0r  ""  ^"Pfoveincnt  in  coal-scuttles,  granted 
to  him  May  10,  ISO/,  whereof  he  is  now  sole  owner,  for,  “  whereof  C  D 


Tho  undersigned-  .-isssignc/ 
tho  above-mentioned  letters 
application. 


o  of  tho  entire  for  an  undivided]  interest  in 
pntent,  hereby  assents  to  the  accompanying 


7-  Fob  a  reissue,  (by  assignee.) 

(To  bo  used  only  when  tho  inventor  is  dead,  or  the  original  patent  was 
issued  and  assigned  prior  to  July  S,  1870.) 

To  the  Commissioner  of  Patents : 

Your  petitioners,  of  the  citv  of _  „ 

way  bo  allowed  to  surrender  the  letters  patent  foTT'  U“tth?' 
coal-scuttles,  granted  May  10, 1SC7  t„  K  F  now  £  "  “ 

patent may'bSss'jfed1 to  them for  tl  U'°  °n“r°  i,,tC,'CSt’  n’,,d 
amended  spooiZl,,  a  '  „  for  tI,08a'"«i'‘vention,  upon  the  annexed 
title,  iS  “  . 


3.  Fob  an  extension,  (by  a  patentee.) 

To  the  Commissioner  of  Patents  : 

PnteZ No!  12811^ f«  Zimnrovem  Ti — l - ’  1)rnl's  tl,nt  lcttcrs 

August  17,  1853,  may  ho  oxtondod°for  "  Svt*nni'C,,ei''CSl  grn,,to<1 10  llim 
expiration  of  tho  original  term  '  f  *  ycnrs  from  n,,d  nftcr  tbo 


O.FOR  AN  EXTENSION,  (BY  AN  ADMINISTRATOR.  ^ 
To  tho  Commissioner  of  Patents  • 

Your  peHtionor  A.  B  of - , - ,  administrator  of  tho  e 

|  °f  O. deceased,  (os  by  roferenco  to  tho  duly  cortifled  copy  of  1, 
ot  administration,  hereto  (annexed,  will  more  fully  appear,)  res 
ftt  .  '  >  PWJ*  that  Lottors  Patont  No.  12842,  for  an  iinr 

mont  in  stoves,  granted  to  said  0.  D.,  August  24, 1853,  may  bo  oxti 
for  seven  years  lVom  and  otter  tho  expiration  of  tho  original  term. 

A.  B.,  Aclministra 

0.  Fob  letters  patent  bob  a  design. 

To  the  Commissioner  of  Patents : 

Your  petitioner,  residing  in - , - ,  prays  that  lottors  p 

mny  bo  granted  to  liim  for  the  term  of  three  and  ono  half  yea: 
“  SOV(m  years,”  or  “  fourteen  years”]  for  tho  new  and  original  desi; 
forth  in  the  annexed  specification. 


To  tho  Commissioner  of  Patents : 

.  Your  petitioners  respectfully  represent  that  tho  Arm  of  A.  B.,  0. 

Co.,  is  engaged  in  tho  manufacture  of  woven  fabrics  at _ ,  — 

and  at  — - , - ,  anil  that  tho  said  Arm  is  ontitlcd  to  tlio  oxol 

uso  upon  the  class  of  goods  which  they  manufacture  of  tho  trade- 
described  in  the  nnnoxed  statement  or  spcciAcntion,  [anil  accompni 
facsimile.] 

They  therefore  pray  that  they  may  ho  permitted  to  obtain  protc 
for  such  luwful  trade-mark  under  tho  law  in  such  cases  mado  and 
vided. 


To  the  Commissioner  of  Patents : 

Yoiir  petitioner  represents  that  on  Mny  8, 1808,  ho  died  an  ap 
tion  for  letters  patent  for  nil  improvement  in  churns,  which  npplic 
was  allowed  July  7,  ISOS,  but  that  ho  failed  to  mako  payment  c 
Anal  fco  within  tho  time  allowed  by  law.  [Or,  “  which  npplieatio 
been  rejected  but  has  not  been  abandoned."]  Ho  now  makes  ran 
application  for  letters  pntent  for  said  invention,  anil  prays  tha 
original  spcciAcntion,  oath,  drawings,  and  model  may  bo  used  ns  n 
■  of  this  application. 


IS.  Petition 


1’OWER  OF  ATTORNEY. 


To  tlic  Commissioner  of  Patents: 

Your  petitioner,  n  resilient  of  the  city  of - ,  Stato  of  — 

that  letters  patent  may  bo  granted  to  him  for  the  invention  si 
tbo  annexed  specification ;  and  lie  hereby  appoints  0.  D.,  o 

of  — — State  of - ,  his  attorney,  with  fall  power  of  sn 

and  revocation,  to  prosccuto  tins  application,  to  mnko  niton 
amendments  therein,  to  receive  the  patent,  and  to  transact  al 
in  tbo  Patent  Office  connected  therewith. 

11.  Power  of  attorney. 

If  tbo  power  of  attorney  be  given  at  any  time  other  than  tl|i 
ing  application  for  patent,  it  will  be  in  substantially  tbo  follov 
To  the  Commissioner  of  Patents : 

Tbo  undersigned  having,  on  or  about  tbo  20th  day  of  July,  1 
application  for  letters  patent  for  nu  improvement  in  a  horse-pow 

appoints  0.  D.,  of  tbo  city  of - ,  State  of - ,  his  attoi 

full  power  of  substitution  and  revocation,  to  prosccuto  said  a[ 
to  make  alterations  anil  amendments  therein,  to  receive  tiio  pi 
to  transact  nil  business  in  tbo  Patent  Office  connected  tlierow 


Signed  at - ,  and  Stato  of - ,  this - day  of  — 

15.  Revocation  of  power  of  attorney. 

The  undersigned  having,  ou  or  about  the  20th  day  of  Decora 

appointed  0.  D.,  of  the  city  of - anil  Stato  of _ ,  his 

to  prosecute  an  application  for  letters  patent,  made  on  or  aboi 
day  of  Jane,  1SGS,  for  an  improvement  in  the  running-gear  ol 
hereby  revokes  the  power  of  attorney  then  given. 

Signed  at - , - ,  this  21st  day  of  July,  1809. 

SPECIFICATION. 

10.  For  a  stAcniNE. 


To  all  whom  it  may  concern : 

Be  it  known  that  I,  flioro  insert  tbo  name  of  tbo  inventor  1  o 

in  the  county  of  — — ,  and  Stato  of  - - ,  have  invented  a 

useful  improvement  in  saw-toothing  machines,  which  iinprov 
ully  sot  forth  in  the  following  specification,  reference  being  li 

accompanying  drawings : 

The  object  of  my  invention  is  to  rapidly  form,  on  tiio  blade  o 
saw,  teeth  gradually  decreasing  in  sizo  from  tiio  broad  to  tin 
th,°  tUo  00“WMtion,  in  a  saw-t  tl  g  inoeli 

b“r  a  ’ 1,1  !‘"d  11  oImi,1>  01  its  oauivalont,  with  rollers, 
t  810  forcnrrJ'i'ig  tbo  blade  A,  as  shown  in 
speotivo  view,  Pig.  1,  0f  tbo  nccoinnnnvlii<r  draw L 


43 


«! m 


The  machine  is  llustratcd  more  in  detail  in  tlio  plane  view,  Kg.  3,  and 
in  tho  vertical  section,  J?ig.  2,  hi  which  it  lias  not  boon  doomed  necessary 
to  show  tho  driving  mechanism.  Tho  blade  is  held  by  and  between  tho 
two  upper  rollers,  a  (tho  lnttor  being  a  fecd-rollor,)  and  two  lower 
rollers,  b  b\  and  is  made  to  travorso  in  tho  direction  of  tho  arrow,  at  a 
gradually  decreasing  speed,  by  causing  a  barrel,  D,  to  unwind  a  chain 
or  its  equivalent  from  a  tapering  barrel,  E,  on  tho  shaft  B.  The  sovernl 
shafts  lmvo  their  bearings  in  a  simple  frame,  IT,  tho  front  portion  7t  of 
tho  latter  forming  a  table,  which,  in  conjunction  with  tho  lower  rollors, 
supports  tho  blade,  as  tho  lnttor  is  cniised  to  travorso  with  its  odges  in 
contact  with  the  adjustable  guides  y  y,  on  tho  frame.  In  this  table  is  a 
fixed  die  or  anvil,/,  on  which  tho  blndo  bears,  and  in  which  is  a  triaugular 
notch,  corresponding  iu  shnpo  to  a  punch,  c,  on  a  rapidly  revolving 
disk.  Or. 


As  tho  blndo  moves  at  a  gradually  decreasing  speed  in  tho  direction  of 
tho  arrow,  tho  punch  will  striko  triangular  pieces  from  its  edge,  and  tho 
result  will  bo  tho  formation  of  tho  desired  graduated  teeth. 

It  will  bo  evident  that  tho  driving-barrel,  D,  may  bo  tapering,  and  tho 
barrel,  E,  cylindrical,  or  that  both  barrels  may  bo  tapering,  nud  arranged 
to  reed  gradually  raster  instead  of  gradually  slower,  with  tho  same  result, 
and  that  tho  blade  may  bo  clamped  to  a  guided  sliding  bed,  controlled 
by  a  tapering  barrel  and  cord  or  chain. 

I  claim  ns  my  invention— 

tflio  combination  in  n  saw-toothing  machine,  substantially  as  described, 
of  a  tapering  barrel  and  chain,  with  a  roller  for  feeding  the  blade. 


Witnesses :  O.  D. 

E.  V. 

[Note.— Tho  accompanying  illustration  is  furnished  to  show  what  the 
character  and  general  arrangement  of  a  Patent  Oillco  drawing  should 
be,  and  it  is  given  with  express  reference  to  what  lias  been  said  rela¬ 
tive  to  tho  drawing  for  tho  Official  Gazette.  But  it  must  bo  remembered 
.  that,  in  coiiscqucnco  of  tho  reduction  necessary  to  mnko  it  fit  tho  page, 
tho  character  of  tho  work  itself  is  not  that  which  an  original  drawing 
on  a  sheet  10  by  15  inches  should  possess.  All  the  shaded  parts  in  such 
a  drawing  should  bo  much  more  open,  tho  spaces  between  tho  lines 
being  fully  twice  ns  largo,  so  that  when  the  same  is  reduced  and  photo- 
lithographed  tho  result  may  bo  clear  nud  satisfactory.] 

17.  Eon  a  nsocEss. 

To  all  whom  it  may  concern : 

Bo  it  known  that  I,  [hero  insert  tho  unino  of  tho  inventor,]  of - , 

in  tho  county  of - ,  and  State  of - ,  lmvo  invented  a  now  and 

useful  process  for  separating  smut  and  other  impurities  from  wheat, 
which  process  is  fully  set  forth  in  tho  following  specification: 

This  invention  relates  to  tbnt  class  of  processes  employed  for  removing 


yot  warm?  oifo  nndThnif  ^nnUs'to^Tnwire^  8,nfe<?1  m,<1  'v,,il0 

.i:,r;rrnK  fJtras 

i .  • 

f  swnte,  will  bo  entirely  L  ived  ami  tbo  lio!lr""m  iPr°CCSS’  'ril‘  f,,Ily 
-oto.  tbb  bL"  of  ^eS:,r  'Vi"  b0  "8  ""i(0  “«•  «- 
i  «B  whooping4  U'°  I",rpMC  °f  C‘Can- 

wbolo  being  then  passed  through  L,LZn-bnttPl>0SCd’- aui1  tbo 

lime  newly  slaked  and  while  yet  warn,  W°  iU0P°s°  to  take 

Ij 0  cIaim  oar  inventiou— 

1  rrora  . in . «•>,  «itota„£nj  „  fojSiS.  “  ™UW 

Witnesses :  E.  F.  O  .D* 

G.H. 

in  thYLLrot-^'^^S  of  ,mm°  1  0,0  ta«“torj  of - , 

nsefnl  compound,  called  “  wool  oil  »  ,  ’ bnvo  1,,V0l'ted  n  new  and 

1,1  the  following  specification  -  ’  "I,,cl1  “'"Pound  is  fully  described 

■This  invention  relates  to  ti,„f  t 

wool  in  the  process  of  manufiLn^and  oonlPO““<ls  used  tolnbricnte 
formed  by  mixing  any  one  or  moro  of  Z  J  ,  C°,,S18ts  Ul  n  '“■“Position 
factoring  wool,  suck  as  olive  hml i  8  0r<h,mrily  used  in  maun- 
an  “il-soap.  e’  lnul>  °1'  "Pwaed  oil,  with  a  solntion  of 

To  prepare  tho  wool-oil  taknn.«„„  „ 
vided  tho  quality  ho  good,  and  dissolvi  thL  0i,:80ap  °f  nnrki«<l.  pro- 
thirty  pounds  ofoil-sonp  to  thirtv  Jn°  tU  ?  mo  ln  hot  water,  say  about 
>ty  of  soap  to  saturate  tho  Lte  .  t°‘ ^ 

aforesaid,  to  wit,  the  soap  solution'  STL"*  lttb°  WwMm.  ' 

:: 

neutralizes  the  stearino  in  tho  oil  •  £„«  S,’  becm'60  tho  oil  of  soap 
A,Kl  for t,,osamo ; 


A  compound  consisting  of  nu  oil  or  „ii„  „  ^ 

cation  of  wool,  in  combination  with  »  !  ?,  “arily  USC|1  ■“  tho  lubri- 

|  •  tially  as  and  for  the  purpose  «h  “  "“-"“ft  s,,bs“>“- 


19.  Foil  A  DESIOX. 
r  2b  fill  ic/iom  it  may  concern  : 

Bo  it  known  that  I,  [hero  insert  the  „«• 

arranged  m  groups  of  three,  so  ns  to  form  triangles.  P 

the  tU°  111,0 "I,ite  1,11(1  tbe  sill°  slriPes  «*.  while 

lif  b,ars  ar°  °  g0lrt  aml  ercen  i  but  1 110  “Ot  consider  tho 
|  colors  selected  to  be  an  essential  element  iu  my  design. 

1  nw  mvnro  .tlmt  carpet-borders  composed  or  a  wide  central  stripe  and 
,,,:no"’  “d0  striPcs  “ 10  “ot  now,  and  I  do  not  claim  them.  Tho 
distinctive  character  of  my  design  is  found  in  the  figures,  which  are 
[  ...  "fought  into  a  border  thus  composed  of  stripes. 

; ,  What  1  claim  as  my  invention  is— 

.  ■  A  l'csign  for  a  carpet  iu  which  tho  border  is  composed  of  stripes 

i  ornamented  substantially  in  tho  mnnncr  nbovo  described. 

20.  Fon  A  TItADE-JIAItK. 

To  all  ichom  it  may  concern  : 

Bo  it  known  that  X,  [hero  insert  tho  name  of  tho  applicant,]  of _ , 

in  too  Bounty  of - aml  State  of - ,  linvo  adopted  for - use 

.  <  atrado  inurk  for  cotton  sheetings,  of  which  tho  following  specification  is 
a  full,  dear,  and  exact  description : 

Our  trade-mark  consists  of  tho  words  and  letters  «  S.  N.  &  Co.’s  Buck- 
oyo  Sheetings.”  Tlicso  lmvo  generally  been  arranged  ns  shown  iu  tho 
;  ,  accompanying  drawing;  nbovo  and  below  tho  figure  of  a  man  repro¬ 
secuted  ns  ascending  tho  sidoof  a  mountain  and  carrying  a  banner,  upon 
which  is  inscribed  tho  word  “  Buckeye;”  and  tho  whole  has  been  inclosed 


within  nn  ornamental  bonier,  substantially  like  that  shown  in  the  draw 
iug.  But  tlio  figure  of  tlio  man  with  the  bannermay  bo  omitted,  orso.no 
otlier  dovico  substituted  for  it,  and  tho  border  may  bo  changed  at  pleas- 
uro,  or  omitted  altogether,  without  materially  changing  the  character 
to„0'.,nnrk>  11,0  two  essential  features  of  which  nro  the  letters  . 
S.  N.  &  Co.’s”  niul  tho  word  “Buckeye.” 

This  trade-mark  wo  lmvo  used  in  our  business  for  ten  years  last  past. 
Iko  particular  goods  upon  which  wo  have  used  it  nro  mndo  of  cotton 
and  known  ns  “  sheetings;”  and  wo  have  been  accustomed  to  print  it  in 
bluo  ink  upon  tho  outside  of  eacli  pieco  of  the  manufactured  goods.  Wo 
havo  also  printed  it  upon  labels,  which  lmvo  afterward  bcon  pasted 
upon  tho  separate  pieces  of  sheetings,  and  also  placed  upon  tho  outside  : 
ot  tho  cases  in  which  tho  goods  have  been  packed. 

S.X.&CO., 

Witnesses :  A.  B.,  By  S’ 

C.  D.  ' 

21.  Amendment. 

„  WASHINGTON',  I>.  O.,  Jlltll  20  -lSOD 

To  the  Commissioner  of  Patents:  • 

In  tho  matter  of  my  application  for  letters  patent  for  an  not 

3.  The  combination  of  tho  self-acting  brake  C,  pin  A  and  slotted 
flanges  D,  substantially  as  described,  and  for  tho  pmposes’set  forth 
A.  B.( 

By  0.  D., 

His  A  ttorncy  in  Pact. 

OATHS. 

22.  By  a  sole  inventor. 

’  __  (To  follow  specincation.) 
a  ti  n — r-’  Co"nUj  of — — >  tsi: 

”  “fl‘  “*  “ 

...» 1.  ,«1  ..WHIM  m,  ,„r  orJ]1Mll  £*■ 


tuted  “and  that  ho  is  a  citizen  of  tho  Bopublio  of  Mexico,”  or  “and 
that  ho  is  a  subject  of  tho  King  of  Italy,”  or  “  of  the  Queen  of  Great 
Britain,”  or  as  tlio  case  may  bo. 

It  the  applicants  claim  to  bo  joint  inventors,  tho  oath  will  read  « tlmt 
1  lrs  ”  IT  UC  ICV° ,hCmSClvCS  t0  b0  th0  oriSi'inl.  first,  and  joint  invont- 

If  the  inventor  bo  dead,  tho  oath  will  bo  taken  by  tho  administrator 
or  executor,  and  will  declare  his  helief  tlmt  tho  party  named  as  inventor 
was  tho  original  and  first  inventor.] 

23.  By  an  applicant  for  a  reissue,  (inventor.) 

State  of - ,  City  anil  County  of - ,  ss: 

A.  B.,  tho  above-named  petitioner,  being  duly  sworn,  (or  affirmed,) 
deposes  and  snys  that  ho  verily  behoves  tlmt,  by  reason  of  an  insufficient 
or  defective  specification,  his  aforesaid  letters  patent  nro  iuoperntivo  or 
invalid  ;  that  tlio  said  error  has  arisen  from  inadvertence,  accident,  or 
’  mistake,  and  without  any  fraudulent  or  dcceptivo  intention,  to  tho  best 
of  his  knowlctlgo  and  belief;  tlmt  ho  is  tlio  solo  owner  of  said  letters 
patent;  for,  “that  E.  F.  is  tlio  solo  owner  of  said  letters  patent,  and 
that  this  application  is  made  on  tho  behalf  and  with  tho  cousent  of  said 

E,  F.;”]  and  tlmt. ho  verily  believes  himself  to  bo  tho  first  and  original 
inventor  of  tho  improvement  set  iortli  and  claimed  in  this  amended 
specification. 

-  A.B. 

Sworn  to  and  subscribed  beforo  mo  this  2Cth  day  of  July,  1809. 

O.D., 

Notary  Public. 

[Notarial  aval.] 

24.  By  .in  applicant  for  a  reissue,  (assignee.) 

(To  bo  used  only  when  tho  inventor  is  dead  or  when’ tho  patent  was 
issued  and  assigned  prior  to  July  8, 1870.) 

State  of - ,  County  of - ,  ss: 

A.  B.  and  0.  D.,  tho  abovc-iinmcd  petitioners,  being  duly  sworn,  (or 
affirmed,)  deposo  and  say  that  tlioy  verily  beliovo  that,  by  reason  of  nn 
insufficient  specification,  tho  aforesaid  letters  patent  granted  to  E.  F. 
aro  iuoperntivo;  tlmt  tho  said  error  1ms  arisen  from  inadvertence,  acci¬ 
dent,  or  mistake,  and  without  any  fraudulent  or  dcceptivo  intention,  to 
tlio  best  of  their  knowledge  and  belief ;  that  tlio  outiro  title  to  said  let¬ 
ters  patent  is  vested  in  them;  and  tlmt  they  verily  bclievo  the  said  E. 

F.  to  bo  tho  first  and  original  inventor  of  tho  invention  set  forth  nnd 
claimed  in  tho  foregoing  amended  specification:  and  that  tlio  said  E.  F. 


Sworn  to  nnd  subscribed  beforo  mo  this  14th  day  of  November,  1809 
A.B., 

Justice  of  the  Peace. 


- — ii— iimj 


-o.  AN  APPLICANT  FOB  EXTENSION,  (PATENTEE.) 

State  of - ,  County  of - ,  ss: 

A.  33.,  the  above-named  applicant,  being  duly  sworn,  (or  affirmed) 
deposes  and  says  that  tlio  foregoing)  statement  and  account  by  him 
signed  nro  correct  and  truo  iu  all  respects  and  (particulars,  to  tho  best 
ot  his  knowledge  and  belief.  ,  cst 

Sworn  to  and  subscribed  before  me  this  1st  day  of  November)  A^D. 


20.  By  an  applicant  fob  an  extension,  (executor.) 

State  of - ,  County  of-- _ ,  {s; 

ilctnfo'/hCJnt0\°!  th°  lllSt  nnd  testnmcnt  °r  Simon  Nowcome, 
deceased,  being  duly  sworn,  (or  afllrmcd,)  deposes  nnd  says  that  tho 
foregoing  statement  and  account  by  him  subscribed  nro  correct  and  trao 
in  ail  respects  and  parties. are,  to  the  best  of  his  informntio.rkno  JweS: 

A.  B., 

o_„„,  .  '  ,  Executor,  <Cc. 

Sworn  to  and  subscribed  before  mo  this  20th  day  of  May,  1S09. 

0.  D., 

Justice  of  the  Peace. 

til.  Supplemental  oatii  to  Acemn-m-  . 

ACCOMPANA  A  NEW  OB  AN  ENLARGED 
CLAIM. 

State  of - ,  County  of _  ss. 

drmsw’arTd 

ssgssss 

Sworn  to  nnd  subscribed  before  mo  this  Uth  day  of  July,  1870^  B’ 
O.D., 

Justice  of  the  Peace. 

.  .  28<  0ATlt  AS  10  ™5  LOSS  OF  LETTERS  PATENT. 

State  of - ,  County  of _ ,  ,*  .  , 


aSSSr* 

^  «»t  l»  to  »0t  to,,  dJolZui,"  *“*•  “  “»«  -l 

Subscribed  and  sworn  to  beibre  me  this  5tk  day  of  October,  m  . 

0.  D., 

Justice  of  tho  Peace. 

29.  OATH  OF  ADMINISTRATOR  AS  TO  THE  LOSS  OF  LETTERS  PATENT-; 
State  of - ,  County  of - ,  8S; 

A.  B.,  of  said  county,  being  duly  sworn,  doth  depose  and  say  that  l,o 
is  administrator  of  tho  estate  or  13.  X,  deceased,  late  of  Boston,  in  said 
county;  that  the  bettors  Patent  No.- 12219,  granted  to  said  IS.  X,  and 
bearing  date  on  tho  9th  day  of  January,  A.  D.  1S35,  have  been  lost  or 
destroyed,  as  ho  verily  belioves;  that  ho  has  made  diligent  search  for 
the  said  letters  patont  in  all  places  where  the  same  would  probably  bo 
found,  it  existing,  and  especially  among  the  papers  of  tho  decedent,  and 
tiiat  he  has  not  been  able  to  liud  said  letters  patent. 

A.  B., 

Administrator ,  <£u 

Subscribed  and  sworn  to  before  mo  this  uth  day  of  October,  1808. 

0.  1)., 

Justice  of  the  Peace. 


State  of - ,  County  of - ,  ss: 

A.  B.,  being  duly  sworn,  deposes  and  says  that  he  is  a  member  of  tlio 
Gnu  of  A.  B.,  O.  1).  &  Co.,  abovo  named ;  that  ho  verily  believes  that 
said  firm  has  tho  right  to  tho  uso  of  the  trade-mark  described  in  tlio 
foregoing  spccillcation,  and  that  no  other  person,  firm,  or  corporation 
lias  tho  right  to  such  use,  either  iu  tho  identical  form  or  having  stick 
near  resemblance  thereto  ns  might  bo  calculated  to  deceive;  nud  that 
tho  description  and  fau-simile  presented  for  record  nro  truo  copies  of  ■ 

:  the  trade-mark  sought  to  bo  protected,  and  that  lie  resides  in - 

and  all  tho  other  members  of  tho  firm  reside  at - ,  in  the  Stnto  of 

f- - ;  and  that  they  aro  all  domiciled  in - ,  nnd  nro  citizens  of 


Sworn  to  nud  subscribed  before  mo  this  15th  day  of  July,  1870. 


APPEALS. 

31.  FROM  THE  EXAMINER  TO  THE  EXAMDiEBS-lN-OniEP. 

To  tho  Commissioner  of  Patents! 

Sib  :  I  Iioroby  appeal  to  tho  examincrs-in-chior  from  tho  decision  of 
tho  principal  oxnminer  in  tho  liiattor  of  my  application  for  lottois  patent 
for  an  iinprovomont  in  wngon-brnltes,  which,  on  tho  20th  day  of  July 
18C9,  was  rejected  tho  second  time.  Tho  following  are  assigned  for  rea 
sous  of  appeal :  (Hero  follow  tho  reasons.) 

A.  B. 

31«.  From  tub  examiner  or  trade-marks  to  the  Commissioner. 
To  the  Commissioner  of  Patents: 

-  1  I‘f'oby  "M®1*1 10  y°“  in  l>orson  from  tiio  decision  of  tho  exam¬ 

iner  ot  trade-marks,  dated  November  15, 1872,  in  tho  matter  of  my  ap. 
plication  for  the  registration  of  a  trade-mark  for  cigars.  Tho  following 
aie  tho  reasons  assigned :  (Hero  follow  tho  rcasous.) 

32.  From  the  examiner  in  charge  op  interferences  to  the 

EXAMINERS-IN-CHIEF. 

To  the  Commissioner  of  Patents; 

Sir  :  I  hereby  appeal  to  tlio  exnmiuors-iii-chief  from  tho  decision  of  • 
the  principal  examiner  in  charge,  in  the  matter  of  the  intcrfcrenco  be 
tween  my  application  for  letters  patent  for  improvement  in  sowing-ma 

??  iettn  »  i»  j*  prS  z: 

O.  D. 

33.  From  the  examiners-in-ohief  to  the  Commissioner. 

To  the  Commissioner  of  Patents; 

O.  D. 

34.  FROM  THE  OOMMSSIONER  TO  THE  SUPREME  COURT  OF  THE 

DisrniGT  op  Columbia. 


useful  iinprovomont  in  velocinod™.  n  , 

1870,  ho  applied  to  tho  Patent (Jlllco o  t  io'n.'o bi°«  tto l8t dtly  of  May, 
tho  same,  [or  for  tho  rcissno  of  n  n«to,1t  ^Jf  i  ?d,Stflte3  for  51 foi 
Juno  10, 1802,]  and  complied  with  the  mf,  0'  tll01'0l°1'  under  date  ol 
1  of  (Jo"G"^,  and  with  tho  rules  of  °f  tU°  S0V0I”a 

eases}  tl.at  his  said  application  was  reject'd  ?  «  clibe(1  iu  “oh 
■  Intents  on  appeal  to  him  on  or  about  Tm  on  ,bj  4 10  Co,n|nissiouor  of 
in  said  Olllco  duo notico  to  tho  OomtataSmmor? V  *""*  ho  lllls 
peal,  accompauiod  with  tho  reasons  f  Pttt<mt8of  ‘his  hisap. 

siouor  has  furnished  him  with  comi)iotnnil  aI’<.n"d  tlmt  tho  Oommis- 

andevidoncoin  ttaonso^Ul^S  ^  morn 

of^eal,  accompany  this 

;  determined  byyom-  "W?1  Ulay  b°  beard  and 

pointed  for  that  purpose-  and  that  '  y  "no  118  bo  ap- 

bo  duly  notified  of  the  of  Pnt°«ts  nmy 

thereof  to  tho  parties  interested.  ^  *  hnt  nmnnorto  Siv®  notice 


,  respectfully  showo°th :  That  ho  ba^eSroinvonted^l^ 


To  tho  Commissioner  of  Patents;  ? 

‘  gives  notice  that  iio'has0 nppoafed^rom  vourV^0  °f - ’  heraby 

E'“,“ . . .  « “"•«>  ji,;;: 

.arr.src“'”r,,''“a“'1^ . . 

A.B. 

^  *»**«**  COURT  IN  APPEARS  FROM  THE  COM- 

missioned  01'  Patents,  adopted  November  so,  1870. 

;  fSSfZSS? *•  “  - -A  -  — 

[  |  “To  the  Supreme  Court  of  the  District  of  Columbia,  in  bane, _ 187- 

ritmDisMMe  r‘ - - '  “  oitizcl1  of - » i«  the  [State}  Ter - 

I  >'•  «?’  u  l !!  ‘ - ’  fcspcctfnHy  shows  ns  follows : 

I  Kct  JJ0?4  f  - <lny  of - >  18~»  I  invented  [describe  the  sub- 

; pate„t  Office]™*  1"'C'U  *"  "‘C  u1ei,l,eal  Kor,u  °f  thc  application  to  the 

l';  latr^i  0,1  tlH> '  <bly  of - 1 18— i  i“  tho  manlier  prescribed  by 

‘w,  i  presented  my  application  to  tho  Patent  Olllco,  praying  that  a  pat- 
;  eat  bo  issued  to  mo  for  said  invention. 


“o.  Such  proceedings  were  lmd  in  said  Office,  upon  said  application, 
that  on  the - day  of - ,  18 — ,  it  was  rejected  by  the  Commis¬ 

sioner  of  Patents. 

“(J.  1  thereupon  appealed  to’  tin's  court,  null  gave  notice  thereof  to 
the  Commissioner  and  tiled  ill  his  Offico  tho  following  reasons  for  said 
appeal : 

“  c.  Tho  Commissioner  of  Patents  1ms  furnished  me  a  complete  copy 
of  all  tho  proceedings  in  his  Offico  upon  my  said  application,  which  copy 
has  been  tiled  herewith,  and  is  to  bo  taken  us  part  hereof. 

“/.  And  thereupon  X  pray  that  tho  court  do  roviso  and  rovorso  said 
decision,  to  tho  end  that’  justice  may  bo  done  in  tho  promises. 

2.  This  petition  shall  bo  tiled  in  tho  clerk’s  offico  of  this  gourt;  and  as 
soon  as  tho  petitioner  1ms  made  tho  deposit  required  by  law  at  tho  com¬ 
mencement  of  suits  in  this  court,  or  said  deposit  has  been  dispensed  with, 
tho  clerk  shall  enter  tho  ease  in  a  docket  to  bo  provided  by  him  for  tho 
purpose,  and  in  which  a  brief  of  said  tiling  and  of  all  subsequent  pro¬ 
ceedings  in  tho  ease  shall  bo  entered  ns  and  when  tlioy  successively  occur, 
down  to  and  including  tho  ilnnl  decision. 

3.  The  clerk  shall  provide  a  mimite-book  of  his  office,  in  which  he 
shall  record  every  order,  rule,  judgment,  or  dccreo  of  tho  court  in  each 
case,  in  tho  order  of  timo  in  which  snid  proceedings  occur ;  nud  of  this 
book  there  shall  bp  two  alphabetical  indexes,  one  showing  the  name 
of  tho  party  applying  for  tho  patent,  nnd  tho  other  designating  tho  in¬ 
vention  by  its  subject-matter  or  name. 

■X.  The  cases  in  tlio  docket  of  causes  shall  bo  successively  numbered 
from  No.  1  onward,  and  each  case  shall  also  bo  designated  by  tho  num¬ 
ber  nssigned  to  it  on  tho  records  of  the  Patent  Office. 

5.  This  docket  shall  bo  called  for  tiio  trial  of  tho  cases  thereon  on 
tho  first  day  ot  each  session  of  this  court  in  general  term,  provided  tho 
petition  lias  been  Hied  ten  days  before  tho  commcncomciit  of  tho  term. 

0.  Tho  opinions  of  tho  court,  when  written,  shall  bo  kept  by  the  clerk 
in  tho  order  of  their  delivery  and  in  a  temporary  book-ffie,  indexed ;  and 
when  so  ninny  have  been  delivered  ns  will  make  a  volunio  of  convenient 
sizo  lie  shall  cause  them  to  bo  bound. 

7.  Tlie  clerk  shall  famish  to  any  applicant  a  copy  of  any  paper  in  any 
of  said  appeals  on  payment  of  tho  lawful  Tees. 

8.  Hearings  of  said  nppenls  shall  bo  subject  to  tho  rules  of  tho  court 
provided  for  other  causes  therein. 

0.  When  the  testimony  of  tho  Commissioner,  or  of  any  examiner, 
touching  tho  principles  of  invention  in  question  shall  bo  deemed  ncccs 
sary,  it  shall  bo  taken  orally  in  opuu  court,  unless  otherwise  ordered  by 
tho  court.  And,  in  sacli  enso,  tho  court  mny  order  it  to  be  reduced  to 
writing',  and  tiled  or  entered  on  its  minutes,  if  it  think,  proper. 

10.  Tho  ilnnl  judgment  or  ordor  of  tho  court  skull  not  recite  any  of  tho 
facts  mndo  to  appear  in  tho  caso,  but  shall  bo  to  tho  following  effect: 


:  °®c0’  r«"‘l  upon  the  te88timonyTthoX“nm^iro°r^f  Patente,]  fofono 

It  s I  thereupon  ordered  and  adjudged  that  tho  [petition  bo  dis¬ 
missed]  [Comiiiissionor  do  issue  to  the  petitioner  a  patent,]  [as  prayed,  1 
[granting  the  petitioner  (so  and  so.)]  J  1  y 

“And  that  tho  clerk  of  this  court  trnnsniit  to  tho  Commissioner  of 
Patents  a  copy  of  this  decree  duly  authenticated." 


To  tho  Commissioner  of  Patents:  : 

•  Your  petitioner,  A.  B.,  of  - - ,  county  of - ,  and  State  of 

- ,  represents  that  ho  has,  by  grants  duly  recorded  in  tho  United 

Stntcs  rntent  Office,  (liber  -,  p*.  _,)  become  tho  ownor  of  an  exclusive 
:  right  within  nnd  for  tho  several  States  of  (Maine,  New  Hampshire,'  nnd 
..  "Vermont, )  to  mnko,  use,  and-  vend  to  others  to  bo  used,  a  certain  im¬ 
proved  mechanical  movement,  for  which  letters  patent  of  tho  United 

States  were  granted  to  0.  D.  or - ,  in  tho  county  of _ ,  and 

Stato  of - ,  April  1,  1809;  that  he  has  reason  to  beliove  that, 

through  inadvertonco,  accident,  or  mistake,  tho  specification  and  claim 
of  snid  letters  patent  aro  too  broad,  including  that  of  which  said 
;  pntciitco  was  not  tho  first  inventor.  Your  petitioner,  tkeroforo,  hereby 
"  cutors  his  disclaimer  to  that  part  of  tho  claim  in  said  specification  which 
is  in  tho  following  words,  to  wit: 

“  1  also  claim  the  sleeves  A  B,  having  each  a  friction  cam,  0,  and  con¬ 
nected,  respectively,  by  means  of  chains  or  cords  K  L  nnd  M  N,  with  an 
oscillatory  lever,  to  operate  substantially  as  herein  shown  nnd  described.” 


The  potitiou  of  A.  B.,  of - ,  in  tho  county  of - ,  and  Stato  of 

- ,  respectfully  represents : 

That  lie  has  mado  certain  improvements  m  velocipedes,  nnd  tlint  ho 
is  now  engaged  in  making  experiments  for  tho  pnrposo  of  perfecting  tho 
i  snino,  preparatory  to  applying  for  lotlers  patent  therefor.  Uo  therefore 
:  prays  that  tho  subjoined  description  of  his  invention  may  bo  fifed  ns  a 
caveat  in  tho  confidential  archives  of  tho  Patent  Offico. 

I  v -  •  A.  B. 

,  SjicciJication. 

Tho  following  is  a  description  of  my  newly-invented  velocipede,  wliiok 
•  ''•»  ns  full,  clear,  and  exact  as  I  am  nblo  at  this  time  to  give,  rcforonce 
v  being  had  to  tho  drawing  hereto  annexed. 


This  invoution  relates  to  that  olass  of  velocipedes  in  which  tlioro  nro 
two  wheols  connected  by  a  beam  forming  a  saddle  for  the  ridor,  tbo  foot 
boing  applied  to  cranks  that  rorolvo  tbo  front  wheel. 

Tbo  object  of  uiy  invoution  is  to  render  it  unnecessary  to  turn  tbo 
front  wheel  so  much  ns  heretofore,  and  at  the  same  time  to  fnoiiitnto  the 
taming  of  sharp  curves.  This  I  accomplish  by  iltting  the  front  nud  the 
kiud  wheols  on  vertical  pivots,  and  connecting  them  by  menus  of  a 
diagonal  bar,  ns  shown  in  tbo  drawing,  so  Hint  tlio  tinning  of  the  front 
wheel  also  turns  tho  bnok  wheel  with  a  position  at  an  angle  with  the 
beams,  thoroby  enabling  it  easily  to  turn  a  curvo. 

In  tho  drawing,  A  is  tho  front  wheel,  B  tho  hind  wheel,  and'  0  tho 
standards  extending  from  tho  nxio  of  tiio  front  wheel  to  tho  vertical 
pivot  a  in  tho  beam  b,  and  D  is  tho  cross-bar  upon  tho  end  of  a  by 


r  [Tlio  form  of  oatli  will  be  substantially  that  provided  for  original  ap¬ 
plications,  except  that,  ns  a  caveat  can  only  bo  tiled  by  a  citizen,  or  an 
alien  who  has  resided  for  one  year  last  past  in  tho  United  Stntes,  nud 
made  oath  of  lus  intention  to  become  a  citizen,  tho  oath  ibould  bo 
modified  accordingly,] 


38.  Op  an  undivided  fractional  interest  in  an  invention  be- 

POKE  THE  ISSUE  OP  LETTERS  PATENT. 

In  consideration  of  ono  dollar,  to  me  paid  by  O.  D„  of' _  I  do 

t  r  T-iea  t0,saitl  °-  D-  nn  m,dividc<1  talfof  -H  my  right 
itle,  and  interest  m  and  to  a  certain  invention  in  plows,  as  fully  set 
forth  and  described  in  tho  specification  which  I  havo  prepared  fif  tho 

ST10"  1,118  bee“  nIr°‘l<ly  mnd°’  Say  “  and  flIcd”J  preparatory  to  oh- 
taming  letters  patent  of  tho  United  States  therefor:  And  I  do  hereby 
U‘'l0riZ0  aud  ^"cst  tho  Commissioner  of  Patents  toissno  tho  said 
letters  patent  jointly  to  myself  and  tho  said  0.  D.,  our  heirs  nud  assigns. 
Witness  my  hand  this  10th  day  of  February,  1808. 

39.  Op  THE  ENTIRE  INTEREST  IN  LETTERS  PATENT. 

In  consideration  of  flvo  hundred  dollars,  to  mo  paid  by  0  D  of 
——,1  do  hereby  sell  aud  assign  to  tho  said  0.  D.  nil  my  right,  title, 
f"d‘  C‘f !“  alld tl;°  *ettors  lmt°nt  of  tho  United  States  No.  -11800 
for  an  improvement  iu  locomotivo  head-lights,  grouted  to  me  July  30, 


trey  ns  tho  same  would  have  been  Md  anfen  ’  i?'^  aad  ea’ 
assignment  and  sale  had  not  boon  niado  *  d  J  y°d  by  mo  if  tWa 
i  WitUCSS  ,ny  l,a,ld  «><s  10th  day  of  Juno,  1809. 

4‘  A.B. 

‘10.  Op  AN  UNDIVIDED  INTEREST  IV  tup  Trm,n.m 

SION  THEREOF  AND 

In  cousidoration  of  one  thons-imi  ,i„u„„„  . 

- - >  I  do  horoby  soli  and  assign  to  tho  said  0°  n'm  br  °;-D.'’,of 

fourth  part  of  all  inV  right  tin-  i  •  f  8a«‘  0.  D.  ono  undivided 
patent  of  tho  United  States  No  lots'-  tv, ltclcst  1,1  aml  to  tho  letters 
:  stoves,  granted  to  mo  Jh,  - 10  “s  ^thn In  ‘  ""TT™*'"'  cooki“S- 

a*  .  .  ^  "ouM  luvvo  been  hold  and  oiijoycd  bv  mo  if 

this  assignment  and  salo  had  not  been  made  U  J  J  11,0  lf 

Witness  my  hand  (Ids  7th  day  of  January,  1809. 

A.  B. 

i '  •«.  Exclusive  territorial  grant  by  an  assignee. 

V  In  consideration  of  ono  thousand  dollars,  to  me  paid  by  O.  D„  of 
77-“,  1  d0  l,eroby  em,,t  aml  convoy  to  the  said  0.  D.  tbo  cxclusivo 

right  to  uinko,  use,  and  vend  within  tho  Stato  or - and  in  no  other 

place  or  places,  the  improvement  in  coru-planters  for  which  letters 
patont  ol  the  United  States,  dated  August  lo,  1S07,  were  granted  to 
E.  F.,  anil  by  said  K.  F.  assigned  to  1110  Docomber  3, 1S07,  by  an  assign- 
mont  duly  recorded  in  liber  X“,  p.  -110,  of  tho  records  of  tho  Patent 
Ofilce,  tho  snmo  to  bo  held  and  onjnycd  by  tbo  said  0.  D.  as  fully  and 
entirely  ns  tho  sumo  w-ould  have'  been  hold  and  onjoyed  by  1110  if  this 
grant  had  not  been  made. 

Witness  my  baud  this  10th  day  of  Unroll,  1808. 

A.  B. 

42.  License— siiop-RionT. 

;  In  cousidoration  of  fifty  dollars  to  bo  paid  by  tho  firm  or  S.  J.  &  Co., 

- i  I  do  horoby  lieonso  ami  empower  tbo  said  S.  J.  &  Co.  to 

manufacture,  at  a  singlo  foundory  and  muoltiuo  shop  in  said - ,  nud 

.  I® 110  other  place  or  places,  tbo  improvement  in  cottou-secd  planters  for 
;  whicli  lottors  patent  of  tbo  United  Stntes  No.  71840  wore  grnuted  to  mo 
,  November  13,  1808,  aud  to  sell  tho  machines  so  iimnul'neturod  through* 
out  tho  United  States,  to  tho  lull  cud  of  tho  term  for  wliioh  said  letters 
j  patent  nro  granted. 

;  Witness  my  hpnd  this  22d  day  of  April,  1809. 


43.  LICENSE— NOT  EXCLUSIVE— WITH  ROYALTY. 

This  ngi'ooinont,  mndo  this  12tli  (lay  of  Soptomber,  1808.  between  A.  B. 
party  of  the  first  part,  and  0.  D.  &  Oo.,  party  of' tho  second  jmrt.  wit 
ncssoth,  that,  wliereas  letters  patent  of  the  United  States  for  nil  ini- 
provemontin  horse-rnhes  woro  granted  to  the  party  of  the  first  part, 
dated  October  4, 1807 ;  and  wliereas  the  party  of  the  second  part  is  do- 
sirous  of  manufacturing  horse-rakes  containing  said  patented  improve¬ 
ment:  now,  therefore,  tho  parties  hnvo  agreed  as  follows: 

I.  The  party  of  tho  first  part  hereby  liconses  and  empowers  the  party 
or  the  second  part  to  manufacture,  subject  to  tho  conditions  hereinafter 

named,  at  their  factory  in - ,  and  in  no  other  place  or  places,  to  the 

end  of  the  term  for  which  said  letters  pntont  were  granted,  horse-rakes 
containing  tho  patented  improvements,  and  to  soli  tho  same  within  tho 
United  States.  ' 

II.  The  party  of  tho  second  part  agrees  to  mako  fiill  and  truo  returns 
to  tlie  party  of  tho  first  part,  under  oath,  upon  the  first  days  of  July  and 
January  in  each  year,  of  all  liorso-rnkcs  containing  tho  patented  improve¬ 
ments  manufactured  by  them. 

III.  Tho  party  of  tho  second  part  agrees  to  pay  to  tho  party  of  tho  first 
part  live  dollars,  ns  a  hcenso-fec  upon  ovory  horse-rake  manufactured  bv 
said  party  of  tho  second  pnrt  containing  tho  patented  improvements": 
provided,  that  if  tho  said  feo  bo  paid  upon  the  days  provided  heroin  for 
semi-annual  returns,  or  within  ten  days  thereafter,  a  discount  of  fifty 
per  cent,  shall  bo  made  from  said  feo  for  prompt;  payment. 

IV.  Upon  a  failure  of  the  party  of  tho  second  part  to  make  returns 

or  tl . 110  1M‘J  n,eut  of  liconso-fees,  as  heroin  provided,  for  thirty  days 

a.tcr  tho  days  herein  named,  the  party  of  tho  first  part  may  terminate 
this  license  by  serving  a  written  notice  upon  tho  party -or  tho  second 
pait;  but  the  party  of  tho  second  part  shall  not  tlioraby  bo  disclaimed 
ironi  any  liability  to  tho  party  of  tho  first  part  for  nny  liconso-fees  duo 
at  tuo  time  ol  the  service  of  said  notice. 

In  witness  whereof  tho  parties  nbovo  named  (tho  said  Uniontown 
Agi {cultural  Works,  by  its  president)  hnvo  lierounto  sot  tlioir  hands  tho 
day  and  year  first  abovo  written. 

A.  B. 

0.  D.  &  00. 

-W.  Transfer  op  a  trade-mark. 

We,  A.  B.  and  a  D.,  of  — — ,  partners  under  tho  firm-name  of  B.  & 

.,  consideration  of  flvo  hundred  dollars  to  us  paid  by  J3.  J?„  or  tho 
°  1,e™1>y  assign,  and  transfer  to  tho  said  E.P.nnd 

Stoves  IwiiT  r?/  t0  US0  iB  th0  amiinfaeturo  and  sale  of 
stot  es  a  certain  trade-mark  for  stoves  deposited  by  us  in  tho  United 
States  Patent  Office,  and  recorded,  therein  July  15, 1870;  tho  sni'no  to  bo 
Hold,  enjoyed,  and  used  by  tho  said  0.  F.,  as  fully  and  entirely  as  tho 


sanio  would  have  been  held  and  enjoyed  bv  ns  ir 
made.  J  1  “  UJ 118  “tins  grnnt  had  not  boon 

Witness  our  hands  this  20th  day  of  July,  i8y(li 


45.  Statement  and  account. 

In  tho  matter  of  the  application  of  a  u  „r., 

To  tho  Commissioner  of  Patents- 

“  . . . 

=Mra,Ta\-E3i,'ss 

wns  <'teslnL°S>Tt‘anS;  bUt,’  t"’°  yCIU'S  aft0I'vnrtl>  tl10  establish., lent 
was  destroyed  by  tire,  without  ju s, . ranee.  In  the  exposure  at  the 
5?  °  eont,  itted  i  1  c  so  I  cl  co  fined  I  to  tie  lo  c 
for  three  years,  when  lie  died,  leaving  applicant,  his  executrix  auil 
widow,  with  a  large  family  and  small  means.  Nevertheless,  applicant 
made  every  effort  to  induce  manufacturers  to  uso  tho  improvement 

aim  at  lust  succeeded  in  inducing  tho  firm  of  0.  T.  .<fc  Co.,  of _ 

to  rcconimeiiCfc  tho  inniiufiictiire  of  the  machines.  But  alter  four  years 
tho  firm  failed,  being  largely  in  debt  to  applicant  for  royalties.  After 
,  this  it  beenmo  impossible  for  applicant  to  do  anything  with  tho  iiivcu- 
;•  tion.  She  wrote  to  various  manufacturers,  anil  mndo  personal  appli- 
;  cation  to  others,  but  found  them  unwilling  to  innko  arrangements  to 
Pay  royalties,  or  to  use  tho  invention  in  any  way,  unless  sho  would  sell 
too  patent,  including  tho  extension,  for  a  nominal  sum.  Sho  states,  how- 
:  over,  dint  she  has  at  length  succeeded  in  perfecting  nil  agreement  with 

;  G.  H.  &  Oo.,  of - ,  conditioned  upon  tho  extension,  whereby  tho 

!  “'d  flrl“  agreed  to  manufacture  tho  pntonted  machines,  nud  to  pay  her 
l  n  ro-V«lty  of  throe  dollars  upon  cncli  ono  mndo.  Aside  from  tho  interest 
;  so  vested  in  G.  H.  &  Co.,  tho  entire  interest  in  tho  oxtonsion  remains 
j  -Tested  in  her,  and  sho  has  made  no  assignment,  contract,  or  agreement 
of  any  kind  for  tho  sulo  or  assignment  of  the  extended  term  to  any  per- 
son  whatsoever. 

The  following  is  bcliovcd  to  bo  a  corrcot  statement  of  recoipts  aud 
'  expenditures,  nud  is  as  full  ns  it  is  posslblo  to  mako  it: 


58 

Receipt*. 

Fiom  proilfs  from  busiaoss,  (for  particulars  or  which  soo 

Schedule  A) .  $1,230  00 

From  royalties  from  E.  T.  &  Oo.,  (for  details  of  which  sco 

Schedule  B)  . .  .  2, 341  00 

From  sale  of  shop-right  to  L.  51 .  230  00 

Total  receipts'. .  3,827  00 

Expenditure*. 

Exponso  of  procuring  patent .  200  00 

Net  receipts  . . • .  3,077  00 

Tlio  invention  is  exceedingly  useful,  as  will  ho  abundantly  proved. 
Tho  testimony  will  show  that  it  lias  been  introduced  upon  20,000  mow¬ 
ing-machines,  and  has  increased  tho  value  or  said  inacliincs  not  less 
than  throo  dollars  each.  It  is  ovidont,  thcreforo,  that  tho  public  have 
,  *JCCQ  greatly  bonedted  by  tho  uso  of  this  invention  j  wliilo  the  fact  that 
0.  D.  invested  his  entire  tiino  and  means,  uud  llnnlly  lost  his  lifo  in  tho 
prosecution  of  his  invention,  is  respectfully  ottered  ns  proof  thnt  ho  1ms 
not  been, adequately  remunerated  for  his  time,  ingenuity,  and  oxpenso 
bestowed  upon  this  invention,  and  tho  introduction  thereof  into  use, 

)  Respectfully  submitted. 

A.  B.,  Executrix. 

[Hero  fullmvH  oath.  Sco  Form  S5.] 

40.  Reasons  of  opposition  to  an  extension,  (by  individuals.) 
Iu  tho  ma  tter  of  tho  application  of  A.  B.  for  an  exteution  of  letters  pat- 
1855  ^  1"lprovomonts  in  B®wiug-machiucs,  No.  12213,  dated  May  15, 

To  the  Commissioner  of  Patents: 

Wo  wish  to  oppose  tho  application  above  referred  to,  for  tho  following 
reasons,  viz :  ° 

First.  Applicant  was  not  tho  original  nnd  lirst  invontor  of  tho  im¬ 
provement  claimed  by  him  iu  said  letters  patent,  tho  snmo  having  been 
^ully  described  iu  tho  English  patent  No.  27,  or  tho  your  1853. 

» ~ ">•  •W-* 

PnlrH,  Sa\ d  i1,.ivo“ti1°"  i8,not  v,dmblc  '»»<>  important  to  tho  public. 
fTAmn-f  -^PPi'cunt  has  been  adequately  remunerated  tor  his  tiino,  in- 
gonuitj.and  expense m  originating  nnd  perfecting liis alleged  inven- 

dne  dnieonc° in  bis  ^ 


Sixth.  Applicnut  has  assigned  to  mi,„ 
teiuion ,  nnd  tho  monaiM1,  fr  ^^*^5**“ oU ‘“‘enaf  In tUn <a. 

r,  .t7ss&a«-*®asa  i  recorded  Juno  2, 1804, 

a  true  atatomonUH^  do  notpresont 


DEPOSITIONS. 

d7.  Notiob  of  taking  testimony. 

•  t  Boston,  Massachusetts,  March  29  lsao 

1  q„,  V-  ’  "lg  heforo  tho  Ooininissioncr  of  Patents. 

-  tho  onico  vr“  y  "rci  ‘hat  0,1  Wednesday,  March  31,  I860,  at 
.  no  oWm-b  M  M  V  '1'’  'r  °  Court8tl*ct,  Boston,  Massachusetts  at 
'  ■  "dock  n  tho  forenoon,  I  shall  proceed  to  take  tho  testimony  of  G 
H  J.  1C.,  and  Ii.  M.,  all  of  Boston,  as  witnesses  in  my  behalf. 

^reh“Z!,imr  T1"  <i°"ti,lno  from  day  to  day  until  completed.  You 
attend  nml  cross-oxiimino. 

t  A.B., 

I - ,  Providence,  Rhode  Island.  **  *  Q'’  AUom!>- 

Proof  oj  service. 

State  of - ,  County  of - ,  ss: 

Personally  appeared  before  mo,  a  justico  of  tho  peace,  tho  above-named 
...  ’  wl,0»  be,"S  d'dy  sworn,  deposes  ami  says  that  ho  served  tho  abovo 
I  "P011  °-  r-i  tlio  attornoy  of  tho  said  O.  D.,  at  ono  o’clock  p.  m.  of 

I  tho  oOtli  day  of  March,  1809,  by  leaving  a  copy  at  his  olllco  in  Provi- 
I  •;  Hence,  Rhodo  Island,  iu  clmrge  of  his  pnrtnor,  It.  S. 

a  A.B. 

Sworn  to  and  subscribed  before  mo  this  31st  day  of  March,  1809. 

E.  F. 

•  (Sorvico  may  bo  acknowledged  by  tlio  party  upon  whom  it  is  made  ns 
follows: 

.  Sorvico  of  tho  abovo  notice  acknowledged. 

O.D., 

By  E.  F.,  his  Attorney.) 

-18.  FOUM  OF  DEPOSITION. 

•  Before  tlio  Commissioner  of  Patents,  in  tlio  iiuittor  of  tho  interference 
'  hetwcon  tho  application  of  A.  B.,  for  a  paper-collar  machine,  nml  tho 
Bettors  Patent  No.  85038,  granted  Decombor  15,  1808,  to  O.  D. 


Depositions  of  witnesses  examined  on  bolmlf  of  A.  B.,  pursuant  to 
annexed  notice,  nt  the  oflleo  of  E.  F.,  No.  30  Court  street,  Bos 
Mnssneliusotts,  on  Wednesday,  March  31, 1809.  Present,  S.  T.,  i 
on  bolmlf  of  A.  B,,  and  V.  W.,  esq.,  on  bolmlf  of  0.  D. 

G.H.  (1. 

G.  H.,  being  duly  sworn,  (or  nfllrmcd,)  doth  depose  and  say,  in  am 
to  interrogatories  proposed  to  him  by  S.  T.,  esq.,  counsel  for  A.  B 
follows,  to  wit: 

Question  1.  What  is  your  name,  ago,  residence,  and  occupation? 
Answer  1.  My  name  is  G.  H.;  I  mil  forty-threo  years  of  ago;  X  n 
manufacturer  of  paper  collars,  and  rcsiilo  in  Ohclsen,  Mnssnehusotb 
Question  2,  &c.  *  •  •  •  •  •  •  •  • 

And  in  answer  to  eross-iu  torrogntorics  proposed  to  him  by  Y.  W.,  < 
counsel  for  0.  D.,  ho  snitli : 

,  Cross-question  1.  How  long  have  you  known  A.  B.? 

Answer  1. 

G.  I 

49.  Certificate  of  officer. 

(To  follow  deposition.) 

State  op - ,  i 

County  of - ,  j  ss; 

At  Boston,  in  said  county,  oil  the  31st  day  of  March,  A.  D.  18G9,  bol 
mo  personally  appeared  the  above-named  G.-H.,  and  mndo  oath  that 
foregoing  deposition,  by  him  subscribed,  contains  tho  truth,  the  wli 
truth,  and  nothing  but  the  truth.  The  said  deposition  is  taken  at 
request  of  A.  B.,  nt  the  time  and  plnco  mimed  in  tlio  notice  hereto 
tnclied,  to  bo  used  upon  the  hearing  of  nil  interference  between 
claims  of.  the  said  A.  B.  and  those  of  C.  D.,  boforc  the  Commission© 
Patents,  on  the  3d  day  of  May,  A.  D.  1SG9. 

Tho  said  0.  D.  was  duly  notified,  ns  appoars  by  the  original  noti 
horoto  annexed,  and  attended  by  V.  W.,  esq.,  his  counsel. 

E.  P., 

Justice  of  tho  Peace 

Tho  magistrate  shall  then  append  to  tho  deposition  tho  notico  uni 
which  it  was  taken,  shall  seal  up  tho  testimony  and  direct  it  to  tho  Oc 
missioucr  of  Patents,  placing  upon  tho  envelope  a  certificate  in  si 
stance  ns  follows :  ’ 

I  horoby  certify  that  the  within  deposition  of  G.  H.,  [if  tho  packs 
contains  more  than  ono  deposition,  give  alt  the  names,]  relating  to  I 
matter  of  interference  botwcon  A.  B.  and  0.  D.,  was  taken,  sealed  i 
April11' a'd^MO  tU°  °0,amiSSi0n0r  0f  Pntouts  «>o  this  20th  day 
E.P., 

_ _ _ _____ _ _  Ju8lico  of  tho  Peace, 


: 


EXPERIENCED  IN  LINE  BUILDING 

stntction  of  each  section  will  he  under  the  super- 
Vilson  II.  Kairbank  of  Warren,  Mass.,  who  has 
lines  anil  better  lines  than  any  other  man  in 
and  is  thoroughly  familiar  with  the  territory, 
ill  five  different  installations  from  New  York  to 


lepost  Company 
usiness  over  its  standard  line  costing  $  i . 373- 
her  of  the  older  companies  could  handle  ove 
t  costing  them  S7.h09.55  a  mile, 
nicnsely  reduced  cost  of  beginning  busim 


show  itself  in  the  Teleposl  Company  s  balance 
nnlv  a  very  small  volume  of  business  is  needed 
rge  dividends  on  this  low  construction  cost. 


would  much  rather  have  his  corporation  made 
impregnable,  his  first  earnings  appearing  in  tin 
value  of  his  stock,  than  clamor  for  excessive  div 
mg  the  necessary  period  of  establishment. 

The  foregoing  policy  will  insure  three  things  t 
|xisl  Company  stockholders: 


1.  The  establishing  of  the  business 
all  parts  of  the  country. 

a.  The  rapid  advance  in  market  valui 
because  of  the  evidence  of  prosperity  V 
the  Company. 

i.  The  tmtinuota  payment  of  large 


THE  BEST,  BUT  NOT  CONTENT 
The  Teleposl  Company  is  formed  to  transmit 
messages  hv  the  quickest  and  cheapest  method: 
by  science  or  invention,  and  its  purpose  is  to  pre 


TELEPOST  DIVIDEND  POUCY 


PERPETUITY 


New  ex- 

plained  uO^e  Company's  desanbttve  pamphlet.  ,  gWfilflf  W® 

TholftxKRIilNQ-.  DEBENTURE  :  CORPORATIONhMi  opened  a  Sub- 
Bcription  JIqj  tlie  flrat  iMtalliiient  dtHIie  fnlly-pidd'Caj)ilal  Stook'‘o£  the. TELE- 
POST  Cfbii^ANY,. at  pto, 810  a  share.  ,  , 

The  llOotripany- will.'oonfine:  thiSvfirstiisBue  to.ionunjnount,', sufficient  to 


iihistettUhe  extension  outrank  lilies,  the 


:  ^s^®aa^i,S3as^5Ss»asaaaa?5s&i^S3s^s 

widely  a  j  y  possiblfehas  :-been  *  adopted’,'’  not '  only*  that ;  the  >greatestnumbep  or  *  co- 

SSJ^&gjyjBSS 

1,0  one  ipdrsbn ;  \  liutfsUbiilCa’jKfe^  stock  ^ 

1  00  foundll^visable,  tho  subscribers  to  the  present  issue- will  each  hayo  a  right 
to  Bubscr;  |b^  i^ro  -rath,  to:  the  now  issue  before  any  offer:  is  mode  to  the  general 
piiblic,  feprding?  to-the  policy  of  •  well-managed  banks:  in;  favoring  their 
•  «lgiruil  fefi if 

1 


schemes  is  the  Hoard  of  Trustees 


I  by  the  independent  oil- 
leir  successful  attempt  to 


of  their  invention.  energy.  patience  and  capital ; 
they  willing  to  subject  the  great  enterprise  for 


It  having  been  legally  determined  that  the  Votii 
of  Trustees  is  a  |M>sitive  protection  of  sound  btisi 
terprise  and  a  guarantee  to  shareholders,  the 
Company  perfected  its  organization  in  that  w 
securing  to  its  stockholders  the  permanent  ov 
management  and  protit-enjoymenl  of  the  public  e 
in  which  they  are  engaged. 


somewhat  different  motive— that  the  Telepost  Company 
will  never  be  sold  out,  merged,  reorganized,  leased 
or  otherwise  controlled,  or  its  business  in  any  way 
menaced  by  outside  speculators : 

i.  The  Inventor  of  the  Delany  System  of  R»|»h1 
A mom.u ic  Telegraphy  ami  his  associates. 

3.  The  public,  who  not  o  i 1  *  ”  *  c  C “ 1  “ 

The  First  Interest :  Mr.  Delany.  who  lias  given  the 
best  work  of  his  life  to  his  Rapid  System,  and  the  K.  H. 
Sellers  Co.,  who  for  many  years  have  liccn  associated  with 
hint  and  have  financed  the  undertaking  during  the  neces¬ 
sary  and  costly  period  of  experiment,  development  and 
r  di/i  g  I  not  propose  lobe  deprived  of  the  fruits 


defend  and  protect.  This  policy  negmx  . 

-"SctrsKs: 

. . - 


ppeal  of  Edison  and  Haering-[ 
ton  from  the  decision  of  tho) 
Commissioner  of  Patents,  off 
March  20th,  1870,  to  tho  Hon.  I 
tho  Seohetaiiy  op  the  In-1 


Argument  (or  Mr.  Prcst-oM. 

I’he  first  qnostion  upon  this  proceeding  (which  in 
^stance  is  nu  appeal),  rolatos  to  tho  just  limits  of  tho 
31-otay  s  legal  power  over  decisions  of  tho  Oommis- 
nor  of  Patents,  on  subjects  clearly  within  tho  Com¬ 
moners  jurisdiction,  and  concerning  which  decis- 
Mal<e/e0^10U  '8  miu^°’  0XCeP^  ho  hns  committed 

Hie  Commissioner  of  Patonts  exorcises  judicial  funo- 
is  upon  questions  of  a  special  oharnotor;  and  tho 
tuto  gives  au  appoal  to  tho  courts  of  law  for  tho 
reotion  of  every  error  which  ho  may  commit.  For 
jrs  suoh  ns  are  hore  allogod,  a  peouliar  and  most 
mcious  remedy  by  notion  is  givon  by  B.  S.,  §  4916, 


Ҥ4916.  Whenever  a  patent  on  application'  is  re- 
“  fused,  either  by  the  commissioner  of  patents  or' by 
“  the  Supreme  Court  of  the  Distriot 'of- Columbia, 
“upon  appeal  from  the  commissioner,  the -applicant' 
“may  have  remedy  by  bill  in  equity,  and.  the  'court 
“  having  cognizance  thereof,  on  notice  to  adverse 
“parties,  and  other  duo  proceedings  had;  may  ad- 
“  judge  that  such  applicant  is  entitled,  according  to 
“  law,  to  receive  a  patent  for  his  invention  as  specified 
“  in  his  olaim,  or  for  any  part  thereof,  as  the  faots  in 
“  the  oaso  may  appear,  and  such  adjudication,  if  it  be 
“  in  favor  of  the  right  of  the  applicant,  sliall-authorize 
“  the  commissioner  to  issue  suoli  patent  on  the  appli- 
“  oant  filing  in  tho  Patent  Office  a  copy  of  the  adjudi- 
“  cation  and  otherwise  complying  with  the  require- 
"  ments  of  law.  In  all  cases  where  there  is  no  oppos- 
"  ing  party,  a  copy  of  the  bill  shall  be  served  on  the 
“  commissioner,  and  nil  the  expenses  of  the  proceed- 
“  ing  shall  be  paid  by  the  applicant  whether  the  final 
“  dooision  is  in  his  favor  or  not.” 

At  the  same  time  certain  powers  over  the  the  Patent 
Office  are  givon  to  the  Seorotnry  of  tho  Interior  by  R. 
S.,§§441,  481,  ns  follows: 

“  §  441.  Tho  Secretary  of  the  Interior  is  charged 
“  with  tho  supervision  of  publio  business  relating  to 
“  tho  following  subjoots.  *  *  * 

“  Fifth. — Patents  for  inventions.  *  *  * 

“  §  481.  The  commissioner  of  patents,  under  tho  di- 
“  rcotion  of  tho  Secretary  of  tho  Interior,  shall  super- 
“  intond  or  perform  all  duties  respecting  the  granting 
“  and  issuing  of  patouts  directed  by  law ;  and  he  shall 
“have  cliurgo  of  all  books,  records,  papers,  models, 
“  nmchinos  aud  othor  things  belonging  to  the  Patont 
“  Offico.”  ...  -  .. 

The  snmo  titlo,  by  an  oxpross  variation,  gives  tb  the' 
Secretary  tho  samo  power  of  supervision  ovo'r  mar¬ 


shals  and. others  as  over  tho  Commissioner  of  Patents, 
with  tho  spoqial  addition  of  appelluto  powor. 

;  .“  The  Secretary  of  tho  Interior  shall  oxorciso  super¬ 
visory  and  appollnto  powor  in  relation  to  the  acts  of 
‘.‘  marshals,  &o,”  (R.  S.,  448).  • 

;!  The  Oommisbionor  of  Patents  has  tho  powor  (denied 
to.all  other  heads  of  bureaus  in  this  department,)  to 
frame;  his  own  regulations  for  submission  to  the  ap¬ 
proval  of  tho  Secretary. 

We  have  only  to  add  that  tho  Commissioner  allows 
and  countersigns,  and  tho  Secretary  signs,  letters  patont; 
and  wo  have  all  tho  provisions  of  law  characterizing 
tho  relation  of  the  Commissioner  to  his  superior  officor 

It  is  oloar,  from  this  exemplification  of  tho  statutes, 
that  the  Seoretary  acquires  his  powor  ovor  tho  decisions 
of  tho  Commissioner,  not  by  any  grant  of  appollato  jur¬ 
isdiction,  but  from  the  roquiremont  that  bis  signature 
shall  be  presont  to  make  a  valid  patont ;  and  from  the 
co-ordinato  enpnoity  in  him  to  frustrnto*tho  Commis¬ 
sioner’s  dooision  by  witholding  that  signature. 

This  power  to  prevent  is  of  tho  greatest  importance 
to  honest  administration ;  and  is  always  roposod  somo- 
whero  in  a  government  of  distributed  powers.  It  is 
generally  a  more  powor  to  stay,  and  not  .a  power  to  re¬ 
vise  or  correot.  It  is  tho  last  repository  of  tho 
sovereign  discretion  touohing  a  sovoroign  grant,  and  is 
exorcised  on  the  wholo  innttor,  without  roforouoo  to 
details,  by  a  simplo  assent,  or  refusal  of  asseut.  To 
enquire  or  deoido  whether  there  has  boon  error,  is  to 
desoond  to  details,  and  to  oxoroiso  appollnto  jurisdic¬ 
tion.  It  is  the  propor  function  of  this  discretion  to  de¬ 
termine  whether  tho  prior  judgmout  was  'upon  a  sub¬ 
ject,  competent  to  be  considered  by  tho  tribunal  or  offi¬ 
cer  making  tho  decision.  In  England  this  powor  is  (in 
respeot :  to  .  patents,)  exoroised  by  the  lord  olinncollor 
as  keeper  of  tho  consoiencb  of  tho  king  and  oustodian 
of.  the  groat  seal.  In  tho  United  States  it  is  oxeroised 
by  the  Seoretary  of  the  Intorior.  In  England  tho  grant 


Of  a  monopoly  is  of  tho  sovereign  graco,  and  may  be 
refused  arbitrarily  (15  and  1C  Viet.,  Oh.  83,  §  1C).  ;  But 
no  such  power  of  rofnsal  by  prerogative  right,  or  in 
other  words,  without  reason,  exists  by  law  in  this 
country.  In  England  tho  highest  judicial  olfieor  of  tho 
realm  is  charged  with  tho  duty  of  nffixing  tho  groat 
seal  to  patents  for  which  warrants  have  boon  issued  by 
the  law  officer  (tho  Attorney- General)  who  1ms  examin¬ 
ed  tho  case  ;  and  yet  though  ho  certainly  must  bo  ro- 
rcgnrdod  as  tho  most  compotout  logal  authority  tb  con¬ 
sider  appeals,  aud  although,  unlike  the  case  of'  the  Sec¬ 
retary  of  the  Interior,  appellate  jurisdiction  is  expressly 
given  to  him  (soo  statuto  horoinaftor  cited),  it  will  bo 
seou,  by  tho  authorities  horonftor  oited,  that  ho  novor 
oxoroisos  that  jurisdiction  to  ovorrulo  tho  subordinate 
law  officer,  wlioii  ho  has  acted  within  his  powers. 

In  Vincent’s  appeal,  li,  L.  R.,  Oh.  App.,  341,  tho  Lord 
Chancellor  said :  .  . 

“  It  would  bo  making  a  dangorous  precodont  to  allow 
“  an  appoal  from  tho  law  officer  of  tho  crown, unless 
“  a  caso  bo  inndo  of  surprise  or  fraud,  or  unless  somo 
“  material  fact  which,  if  brought  boforo  tho  law  officer, 
“  would  probably  have  led  him  to  decido  difforontly, 
"  has  subsequently  come  to  tho  knowledge  of  tho  party 
“  appealing.  I  do  not  think  that  such  an  appoal  ought 
“  to  bo  allowed  on  the  ground  that  somo  fact,  whioh 
“  wns  within  tho  knowlodgo  of  tho  appollant  at  tho  time, 
“  was  not  brought  boforo  tho  law  officer.  j 

“  In  tho  present  caso,  tho  party  opposing  rolies  on 
“  public  user  of  tho  invention,  but  tho  applicant  raises 
“  tho  point  that  such  usor  took  placo  in  consequonco 
“  of  a  fraud  which,  under  15  and  15  Viot.,  oh.  83,  §  10, 
“  would  destroy  tho  oflbct  of  tho  usor.  This  is  a  quCS- 
“  tion'  of  faot,  whioh  ought  to  bo  tried  by  a  jury  on 
“  viva-voce  ovidouco,  and,  if  I  wore  to  refuse  to  allow. 
“  tho  patent  to  be  soalod,  I  should  bo  precluding  Vin- 
“  oent  from  tho  opportunity  of  having  it  so  tried'." v  ' 


The  English  statute  under  whioh  such  proceedings 
lire  taken  is  the  16  and  16  Viot.,  oh.  83,  ns  follows  : 

“  §  7.  Every  application  for  letters  patent,  made 
“  under  this  not,  shall  bo  referred  by  the  commissioners,' 
“  according  to  suoli  regulations  ns  they  may  think  fit 
“  to  make,  to  one  of  tho  law  officers. 

“  §  16.  It  shall  bo  lawful  for  suoli  law  olfieor,  nfter 
■"  suoh  hearing,  if  any,  as  ho  may  think  fit,  to  oause  a 
“  warrant  to  bo  made  for  tho  sealing  of  lottors  patent 
“  for  the  said  invention,  and  suoh  warrant  shall  bo 
“  sealed  with  tho  seal  of  tho  commissioners,  and  shall 
“  sot  forth  tho  tenor  and  oll'cet  of  the  lottors  patent 
“  tlioroby  authorized  to  bo  granted,  and  snob  law  olfieor 
“  shall  diroot  tho  insertion  in  suoh  lottors  patont  of  all 
“  suoh  restrictions,  conditions  and  provisions  ns  he  may 
“  deem  usual  and  oxpodiont  in  suoh  grants,  or  neces- 
“  sary,  in  pursuance  of  the  provisions  of  this  aot,  and 
“  the  said  warrant  shall  be  tho  warrant  for  tho  making 
“  and.  sealing  of  lottors  patent  under  thra  not,  aocord- 
“  to  the  tenor  of  tho  said,  warrant.  Provided  always 
“  that  the  lord  chancellor  shall  and  may  have  and 
"  oxorciso  suoh  powers,  authority  and  discretion  in  ro- 
“  spoct  to  tho  said  warrant,  and  tho  lottors  patont 
“  therein  directed  to  bo  wndo  undor  this  aot,  ns  ho  now 
“  has,  and  might  now  oxorciso  with  respect  to  tho  wnr- 
“  rant  for  tho  issue  undor  tho  groat  soal  of  lottors  pat- 
“  out  for  any  invention,  aud  in  rospoot  to  tho  making 
“  and  issuing  of  such  lottors  patont.” 

-  “  16.  Providod  nlso  that  nothing  lioroiu  contained 
“  shall  oxtond  to  nbridgo  or  affect  tho  prorogativo  of 
“  tho  orown  in  relation  to  tho  granting  or  withholding 
“  tho  grant  of  any  lottors  patent.” 

In  nnothor  oaso  it  was  said  : 

“  If  partios  having  full  knowledge  of  tho  faots,  aud 
I'  taking  thoir  own  courso  in  tboir  manner  of  using 
"  the  materials  within  their  -knowlodgo,  either  do  not 


“  raise  bofore  the  attorney  general  a  particular  argu- 
“  ment  upon  tho  foots,  or  do  not  bring  forward  all  tbe 
“  ovidonco  bearing  on  those  facts  and  then  at  their 
“  command,  they,  in  my  judgment,  are  not  entitled  to 
“  tho  iudulgouco  of  having  the  matter  remitted  book  to 
“  tho  attoruoy-gonoral,  nor  have  they  any  right  to  oull 
“  upon .  tho  lord  chancellor  to  discharge,  in  that  re- 
“  spoot,  tho  oflico  of  tho  nttornoy-gonoral.” 

Ax  parte  Sheffield,  Law  Reports,  7 
Ohancory  Appoals,  239-240. 

'  Tlio  king,  having  power  by  act  of  Parliament  to  grant 
letters  patent  undor  tho  groat  sonl  from  time  to  time, 
for  theatrical  exhibitions,  granted  a  pntent  to  tho  peti¬ 
tioner  for  a  regular  thoatro.  A  subsequent  patent  for 
a  oirous  having  boon  passed  by  tho  lord  privy  seal, 
tho  first  patentee  opposed  tho  sealing  of  tho  potent  for 
tho  cirous  by  tin}  chancellor. 

Lord  Chancellor  (Lifford)  “  An  application  may  bo 
“  mado  to  tho  groat  seal  if  the  grant  be  illegal,  or  if 
“  tho  crown  bo  imposed  on  or  deceived.  In  suoh 
“  cases  the  olmncellor  will. withhold  the  seal.  Li  this 
“  case,  as  to  tho  matter  of  discretion,  whether  the 
“  crown  ought  or  not  to  grant  suoh  n  pntent,  I  have 
“  nothing  to  do  witli  that.  Tho  single  question  hero  is 
“  whothor  thoso  exhibitions  of  Astley  are  the  subject  of 
"  a  patent  within  the  act.’’ 

“  4.  *  *  It  is  said  that  I  ought,  as  keopor  of  tho 
“  king  s  conscience  to  withhold  tho  great  sonl.  But 
“  tho  granting  of  this  patent  has  been  considered  by  the 
“  lord  lieutenant ;  so  I  do  not  think  that  I  havo  any- 
“  thing  to  do  with  that.  If,  indood,  tho  patent  wore  il- 
“  legal,  it  would  bo  othorwiso.  I  can’t  withold  tho 
“  great  Bonl.” 

Jlxjmrtc  Daly,  Vornon  &  Soriven’s  Rop , 
.602,  604. 

(Irish  Chancery  R.),  A.  D.  1788. 

Tho  same  principles  have  govornod  the  oxoroiso  of 


this  kind  of  executive  discretion  in  this  country and  it  is 
interesting  to  observe  that  our  courts,  and  tho  Attorney 
General  of  tho  United  States,  in.  discussing  tho  ques¬ 
tion  hero,  have,  without  being  referred  to  these  English 
authorities,  adopted  tho  same  rulo.  Indeod,  it  is  clear 
that  any  other  rulo  would  bo  dostructivo  of  tho  system 
of  dividod  responsibility  and  power  which  prevails  hero, 
and  in  Groat  Britain. 

Mr.  "Wirt  said  (Atty.  Gcu.  Op.,  vol.  1,  p.  493) :  “  In 
“  a  government  purely  of  laws,  no  officer  should  bo  por- 
“  mittod  to  stretch  his  authority,  and  carry  tho  inllu- 
-  “  once  of  his  office  beyond  tho  cirolo  which  tho  posi  • 
“  tive  law  of  tho  land  has  drawn  around  him.” 

Mr.  Hoar  said  (13  Opinions,  p.  28,-9) :  “  Tho 
“  patent  laws  having  mado  ample  provision  for  revising 
«  the  decisions  of  tho  Commissioner  in  propor  cases, 
“  by  tbe  judiciary,  and  the  Execntivo  having  no  appel- 
“  late  power  over  questions  arising  thorounder,  tho  party 
“  should  bo  loft  to  pursue  tho  mode  of  robot  there  pro- 
“  vided,”  concluding  that  “  tho  President  should  not 
“  interfere  with  the  rules  and  directions  promulgated 
“  by  the  Commissioner  of  Patents  concerning  proceed- 
“  ings  in  his  bureau  for  tho  extension  of  patonts.” 

Tho  supervisory  power  of  tho  Secretary,  in  cases  of 
an  original  grant  of  a  patent,  is  not  greater  or  less  than 
in  oases  of  an  extension  undor  L.  183G,  §  12,  or  L.  1848, 
oh.  47,  §  1.  In  tho  easo  of  an  extension  allowed  by  tlio 
Commissioner  it  is  sottled  that  his  decision  is  final  in 
tho  absenco  of  fraud  aud  auy  excess  of  jurisdiction. 

Story,  J.,  said  :  ’ 

“  It  may  bo  laid  down  ns  a  gouoral  rule  that  where 
“  a  particular  authority  is'confidod  to  a  public  officer, 
«  to  bo  oxoroisod  by  him  in  his  discretion  upon  an  ex- 
.  “  animation  of  facts  of  which  ho  is  mado  tho  appro¬ 
priate  ju’dgo,  his  deoisiou  upon  theso  facts  is,  in  tho 
“  absence  of  any  controlling  provisions,  absolutely 
“  conolusivo  as  to  tho  oxistouco  of  thoso  facts. 

“My  opinion  therefore  is  that  tho  grant  of  tlio 
“  present  amended  pntont  is  conclusive  as  to  tho  ex- 


"  istenqo  of  all  the  faots  whioh  were  bylaw  necessary- 
“  t.o  entitle  him  to.  issue  it  j  at  least,  unless  it  was  ap-  . 
“  apparent  on  the  very  face  of  tho  patent  itself,  with?  ] 
“  out  any  auxiliary  evidence,  thnt  lie  was  guilty  of  a 
“  olear  oxcoss  of  authority,  or  thnt  tho  patent  was  pro-  ' 
“  oured  by  d  fraud  between  him  and  the  patentee, 

“  which  is  not  pretended  in  the  prosont  oase.” 

Allen  v.  Blunt,  3  Stoiy  E.,  745. 

“  The  act  of  the  Oomuiissionor  in  extending  letters 
“  patent;  is  oonelusivo  ovidouoo  of  all  the  faots  whioh  . 
“  he  is  required  to  find-  in  ordor  to  grant  such  exton- 
“  sion,  in  tho  absence  of  fraud  and  any  excess  of  juris- 
“  diotion.” 

Oliiin  v.  Brower,  2  Onrtis  0.  Ot.  B.,  50G, 
Hoad-noto. 

So,  in  the  ease  of  a  pro-omption  claim,  disallowed 
by  tho  register  aud  receiver,  under  §  3  of  tho  Act  of 
May  29th,  1830,  which,  unlike  the  subsequent  Act  of 
September  4,  1841,  §  10,  contained  no  oxpross  provi¬ 
sion  for  an  appeal  to  the  Soorotary  of  the  Treasury. 

Legnro,  A.  G.,  said  : 

“Tho  case  *  *  is  simply  one  of  a  pre¬ 

emption  claim,  disallowed  by  the  oflicors,  wholmd  com¬ 
petent  authority  to  judge  of  its  validity  on  grounds 
satisfactory  to  them,  that  it  was  unfounded.  *  * 

This  judgmont  I  think  right.  But  right  or  wrong  is 
not  tho  question.  Tho  law  gave  them  the  authority 
to  docido  tho  caso,  aud  they  lmvo  done  so.  Tho,  do-' 
partmont,  in  my  opinion,  ought  to  acquiosco  in  that 
judgmont,  ns  in  every  point  of  viow  conclusive  against  ’ 
tho  olaim  ”  3  Op.  GGG,  GG7. 

In  a  similar  caso  Attoruoy-Gonoral  Butler  gave  his 
opinion  that  “  when  legal  ovidoneo  is  onco  offored  to 
“  S>Q  register  and  receiver  it  is  their  oxclusivo  prov- 
“  iuco  to  judge  of  its  weight  and  force,”  (3  Opinion, 


In  the  subsequent  oaso  of  an  application  for  a  patent 
by  tho  nssigneo  of  n  land  warrant,  whioh  was  issued  by 
tlio  Commissioner  of  Pensions,  on  depositions  alioged 
to  bo  false ;  Secretary  Stuart  said  :  “I  will  not  pretend 
“  to  say  that  oases  may  not  arise  in  whioh  it  would  be 
“  tho  duty  of  tho  Department,  or  of  tho  President,  to 
“  forbid  tlio  issue  of  the  patent.  Whore  tlioro  was  any 
“  collusion  botwoon  tho  officers  and  tho  warrantees,  or 
“  when  the  warrant  was  in  tlio  hands  of  a  party  to  the 
“  fraud,  tlioro  would  be  no  doubt  of  tlio  duty  of  tlio 
“  Department,  or  of  tho  President,  to  arrest  tlio  issue 
“  of  tho  patent.  iiio  mattor  is  ono  of  oxooutivo  disoro-. 
“  tion,  iu  my  judgment,  and  it  ought  to  bo  exercised 
“  in  such  a  way  as  to  do  substantial  justice.” 

1  Lostor  Land  Laws,  G13. 

“  An  appeal  doos  not  lio  to  tho  President,  from  the 
“  decision  of  tho  heads  of  tho  difibront  executive  de- 
“  partmonts.  This  has  been  settled  both  by  judicial 
“  decisions,  aud  by  tho  practice  of  tho  government. 
“  Tho  truth  is,  such  an  appollate  jurisdiction  would 
“  rondor  it  impossible  for  tho  President  to  discharge 
“his  high  duties  to  tlio  country,  aud  would  resolve  his 
"  oifico  into  a  tribunal  to  ho  ir  and  determine  private 
“  claims  in  tho  last  resort.” 

President  Buchanan,  1  Lostor  Land  Laws, 
G81. 

It  is  cloarly  dedueihlo  from  thosu  authorities  that 
tlioro  oxist  iu  this  country  and  in' England  cortaiu 
principles  of  bureaucratio  government  applicable  to  this 
caso,  to  disregard  which  would  soon  throw  tho  whole 
systom  of  departmental  administration  into  confusion, 
bosidcs  opening  tho  door  for  worso. 

The  gonornl  principle  is — 

Tho  superior  administrative  olficor,  whoso  aot  or 
sigunturo  is  requisite  to  comploto  tho  declaration  of  a 
judicial  judgment  by  Ins  subordiuuto,  1ms  a  duty  to 
geo  that  his  subordinate  has  acted  within  his  jurisdio- 


10 


tion,  and  a  corresponding  duty  to  withhold  his  approval 
from  aots  dono  beyond  that  jurisdiotion  or  fraudulently,  . 
and  to  yield  that  approval  -whore  such  jurisdiction:  has 
not  boon  oxcoodod,  and  tho  subordinate  has  aoted 
honestly. 

The  special  applications  (appropriate  to  this  oaso) 
of  this  rule  for  offioinl  conduot  are  : 

1.  Where  tho  not  done  is  the  formation  by  tho  Com¬ 
missioner  of  Patents  of  a  judicial  judgmont  upon  a  legal 
question  necessary  to  bo  dotorminod  by  him,  tho  Sec¬ 
retary  of  tho  Interior  will  not,  in  this  country,  enquire 
into  tho  correctness  of  that  judgmont,  but  only  into 
the  regularity  of  the  application  to  himself.  He  will 
refuse  to  reviso  the  judgmont  upon  points  of  law  or  faot 
involved  in  the  original  judgment,  because  appellate  juris¬ 
diction,  has  boen  given  on  such  questions  to  tbe  courts 
of  law  and -has  not  been  given  to  him.  \ 

2.  The  requirement  that  ho  shall  sign  all  patents  is 
intended  to  soparate  official  functions,  and  to  increase 
tho  safeguards  against  collusive  or  fraudulent  judg¬ 
ments,  in  relation  to  patents.  It  oroates  a  practical 
veto  power,  to  bo  exorcised  in  oaso  of  fraud;  or  excess 

of  jurisdiction,  by  tho  Commissioner  of  Patents _ as, 

for  instance,  if  ho  should  issuo,  or  endeavor  to  obtain 
(by  virluo  of  the  Secretary’s  signature),  a  patont  for 
lands,  under  tho  guiso  of  lottors  patent  for  an  invention, 
or  Should  send  to  the  Secretary  a  patont  for  some  con¬ 
trivance  of  a  uaturo  not  within,  but  without,  the  law 
or  the  statutes. 

3.  The  _  statutory  provision,  giving  tho  Secretary 
“supervision”  over  tho  public  business  relating  to 
patents  for  inventions  (R.  S.,  Ill),  and  that  requiring 
the  Commissioner  of  Patonts,  uiulor  tho  direction  of 
the, Score tary  of  tho  Interior,  to  suporiutoud  and  per¬ 
form  all  duties  “  respecting  tho  granting  and  issuing  of 
patents  directed  by  law,"  givo  no  powor  of  intervention 
bythoSecretftrj-into  the  aot  of  adjudication  by  the  Conn 


11 

missioner.  The  duties  to  be  performed  by  him  are  all 
•  directed  by  law."  Among  those  duties  is  to  allow,  and 
issue,  and  roissue  patents  in  cortuiu  cases  to  assignees. 
This  makes  it  tho  duty  of  the  Commissioner  sometimes 
to  dotormino  questions  of  titlo,  or  disputes  us  to  assign¬ 
ments.  Not  only  doos  tho  law  put  upon  the  Commis¬ 
sioner,  and  on  him  alone,  tho  performance  of  this  duty  of 
docisiou,  but  tho  duty  is,  by  its  nature,  incapable  of 
boing  directed  or  controlled,  oxcopt  by  appeal ;  and 
such  appeal  is  expressly  given,  in  terms  broad  enough  ' 
to  cover  the  case  of  every  invoiitor  failing  in  his  appli¬ 
cation,  by  11.  K.  4,015.  It  is  possible,  howovor,  that 
tho  Commissioner  inuy  be  direatod,  as  to  tho  oxternal 
formalities  touching  tho  general  conduct  of  his  business, 
and  bo  compcllod,  in  si  ort,  if  necessary,  to  proooed  with 
tho  discharge  of  his  duties.  The  language  of  Attorney 
General  Wirt  (1  Op.,  020),  is  precisely  applionblo : 

“  Ho  (tho  Prosidout,)  is  not  to  porform  tho  duty,  but 
“  to  soo  that  tho  officor  assigned  by  law  porforms  his 
“  duty  faithfully— that  is  honestly  :  not  with  perfect  cor- 
“  redness  of  judgment,  but  honestly.” 

It  not  being  pretended  that  the  question  decided  by 
the  Commissioner  was  not  one  proper  and  necessary  to 
bo  passed  on  by  him,  and  it  not  being  pretended  that 
lie  has  acted  with  fraud  or  collusion,  it  is  respectfully 
submitted  that  tho  Secretary  of  tho  Interior  is  not  only 
without  jurisdiction  to  consider  whether  tho  Commis¬ 
sioner  h  is  erred  judicially,  but  that  to  withhold  his 
signature,  upon  any  investigation  or  opinion  of  his  own, 
in  a  caso  whore  tho  jurisdiction  of  tho  Commis¬ 
sioner  is  manifest,  and  bis  act,  within  liis  authority, 
and  not .  challenged  for  bad  faith,  would  bo  vio¬ 
lently  subvorsivo  of  tho  truo  ordor  of .  public  busi¬ 
ness.  Tho  question  now  involved  is  a  siinplo-  ques¬ 
tion  undor  a  branch  of  tho  law  whieli  all  lawyers 
understand.  But  if  it  is  once  established  thnt  tho  Suero¬ 
tary  will, on  appeal,  enquire  to  soo  whothor  tho  dooisions 
of  tho  Commissioner  of  Patents  aro  orrouoous,  (even 


though  it  bo  also  understood  that  he  will  not  i-ovorso, 
oxoopt  whoro  his  mind  is  entirely  elonrupon  theoi-ror,) 
hisufficowill  bo  called  on  to  ontortain  an  nppontin 
every  interference,  or  other  disputed  case.  As  was  said 
by  the  Attorney-General  (1  Opinions, .  G29),  all  tho 
diitios  of  his  subordinate  will  “  bo  accumulated  upon 
him  in  the  last  resort and,  unless  ho  is  versed  in 
patent  law,  ho  will,  ns  is  reported  to  have  boon  said 
by  Mr.  Secretary  Browning,  in  ordor  to  the  right 
performance  of  this  duty,  be  required  “  to  spoml  days 
and  nights  in  learning  patent  law.” 

In  discussing  a  technical  quostion  of  jurisdiction, 
there  is  no  plnce  for  argument  upon  rnorits;  but 
it  is  proper  to  call  tho  attention  of  tho  Secretary 
to  the  fuct  that  Mr.  Prescott  is  not  within  the 
benefit  of  B.  S.  4915,  on  tho  grouud  that  no  patent 
has  been  refused  to  him  by  the  Commissioner  (if  not 
on  other  grounds),  while  Mr.  Edison  is,  as  tho  inventor, 
arid  the  failing  party,  within  tho  romody  of  that  stat¬ 
ute,  upon  all  its  conditions.  A  refusal,  thorofoi-o,  to 
sign  the  letters  patent'  allowed  (and  no  otliors  call  bo  ' 
signed),  is  to  rob  tho  judgment  of  the  Commissioner  of 
ull  its  value  to  tho  successful  party,-  and  yet  to  shut 
him  out  from  all  romedy.  A  similar  consideration  is 
referred  to  in  Vincent's  Appeal  ns  boiug  itself  sufficient 
ground  for  not  withholding  the  executive  approval. 

Comploto  copies  of  tho  printed  points  .upon  the 
luoiits  of  tile  controversy  between  tho  parties,  us  sub¬ 
mitted  to  tho  Commissioner  of  Pntonts,  nro  horowith 
submitted,  and  a  copy  of  tho  decision  of  tho  secretary 
upon  tho  oral  argument  on  tho  15th  of  April  is  horoto 
annexed.  * 


•Boscop.  CoNiama, 

GnosvENon  Pon-rmi  Lowbey, 

Of  Counsel  for  Mr.  Piiescott. 

<a?' 


SEORETARY  Df.LANO’s’ DECISION.  ' 

It  is  tho  priiotieo  of  tho  department  to  sign  without 
inquiry  all  patents  that  lire  sont  up  from  thd.  Patout 
Oflico  with  tlio  signature  of  tho  Comriiissionor  at¬ 
tached  boforo  tlioy  aro  presontod.  As  far  us  I  know; 
it  has  boon  tho  prnctico  of  tho  oflico  from  timo  im¬ 
memorial.  I  cannot  say  to  tho  timo  whoroof  tho 
memory  of  man  runuuth  not  to  the  contrary;  ,fco.;  My 
memory  only  dates  back  to  tho  day  of  -'Secretary 
Ewing.  Tho  records  of  tho  department;  as  Inis  been 
woll  assorted  by  tho  counsol,  show,  that  applications  to 
tho  Seci'clury  to  withhold  his  signature  to  those 
pntonts  have  boon  very  rare,  if  one  has  ovor  lieon 
made.  Novortholoss;  I  am  vory  clearly '  of  tho 
opinion  that  wliou  my  attention  is  called  to  the 
facts  of  a  case,  mid  my  judgmont  is  that  a  patent . 
should  not  bo  issued,  it  would  bo  my  duty 
to  withhold  my  signature  from  tho  pulout.  But  I 
think  good  practice  requires  that  my  opinion  should 
rest  upon  tho  enso  ns  prosonted  to  tho  Commissioner : 
and  thoroforo  I  should  not  bo  inclined,  I  think,  nndor 
uny  circumstances,  to  direct  tho  introduction  of  othor 
avidouco  than  that  which  was  boforo  tho  Commissioner. : 
Cortaiuly  in  this  case,  at  this  stage  of  it,  I  should  bo 
unwilling  to  givo  an  ordor  for  tho  taking  of  testimony 
for  its  continuance,  ns  tho  counsel  upon  ouo  sido  of  tho 
enso  linvo  asked.  Now,  ns  to  whotlior  in  my  judgmont 
I  shall  or  shall  not  doom  it  my  duty  upon  tho  cuso,  ns 
it  is  boforo  mo,  to  sign  or  withhold  my  signature  from  ' 
tho  patent,  !  shall  oxpress  no  opinion.  It  will;  per¬ 
haps,  bo  timo  onougli  to  oxpross  an  opinion  when  tho 
papors  nro  prosonted  to  mo  for  signature  ;  but  if  tho 
couusol  will  rest  tho  caso  upon  its  prosout  nrgumont, 
wliou  I  reach  it  by  the  presentation  of  tho  putout,Iwill 
deeido  it.  If  thoy  wish  to  argue  that  quostion  further 
at  an  onrly  day,  I  will  hoar  it,  if  they  agroo  upon  tho 
timo.  So  that  virtually,  if  I  rnnko  mysolf  understood, 

I  doolino  to  grant  oitlior  of  tho  motions  that  have  boon 


14 


submitted  to-day— either  to  dismiss  the  oaso  or  con¬ 
tinue  it  and  nllov.'  additional  testimony  to  be  taken 
in  it.  1  recognize  the  faot  that  to  the  Commissioner  is 
entrusted,  in  the  first  instance,  the  duty  of  examining 
and  dooiding  upon  nil  questions  that  arise  before  him 
in  his  office  and  are  presented  to  him  ;  but  X  am  un¬ 
able  to  bring  my  mind  to.the  conclusion  that  it  would  be 
my  duty  to  sign  a  patent  beoauso  in  his  best  judgment 
he  had  direoted  it  to  bo  issued,  if  I,  on  the  evidence 
iu  the  ease  as  presented  to  me,  should  be  of  the  opin¬ 
ion  that  his  conclusions  wore  dearly  and  distinctly  er¬ 
roneous.  X  do  not  say  any  thing  about  what  I  should' 
do  in  a  doubtful  case.  I  do  not  desire  to  express  any 
opinion  at  present  in  any  other  torms  than  tlioso  I 


QUADRUPLEX  CASE  VOLUME  70  -  CONTENTS 


Atlantic  and  Pacific  Telegraph  Company  v.  George  B.  Prescott,  Western 
Union  Telegraph  Company.  Lemuel  W.  Serrell  and  Thomas  A.  Edison. 
Superior  Court  of  the  City  of  New  York. 

1.  Amended  Bill  of  Complaint.  May  21,  1877. 

2.  Answer  of  George  B.  Prescott.  May  13,  1876. 

3.  Answer  of  Thomas  A.  Edison.  1876.  (Bound  out  of  order  between 

pages  736-737  of  Plaintiff's  Testimony  but  filmed  in  its  proper 
sequence.) 

4.  Answer  of  Western  Union  Telegraph  Company.  May  28,  1877. 

5.  Answer  of  George  B.  Prescott  to  the  Amended  Complaint. 

May  28,  1877. 

6.  Plaintiff's  Exhibits  I  through  Z.3. 

7.  Testimony  for  Plaintiff. 

List  of  Witnesses: 

George  D'Infreville 
Thomas  A.  Edison 
Chase  B.  Harrington 
Josiah  C.  Reiff 
Giovanni  P.  Morosini 
Henry  van  Hoevenberg 
Edward  H.  Johnson 

8.  Plaintiff's  Testimony  in  Rebuttal  and  Exhibits  put  in  on  Cross- 
Examination  of  Defendants'  Witnesses. 

Exhibits  Z.4  through  Z.8. 

Plaintiff's  Rebuttal  Witnesses: 

William  D.  Hennen 
Hiram  Barney 
Thomas  A.  Edison 
Joseph  T.  Murray 
Zenas  F.  Wilber 
George  D'Infreville 
Ellis  Spear  (affidavit) 


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[SUPERIOR  COURT, 

OF  THE  CITY  OF  NEW-TORK. 


OE  B.  Prescott,  The  West-  f 
f  Union  Telegraph  Com- l 
or,  Lemuel  W.  Serrell  and  } 
ojias  A.  Edison.  ..  , 


;  Tlio  plaintiff  respectfully  shows  to  this  c 


First.  The  plaintiff  is  a  corporation,  duly  incorpo¬ 
rated  under  the  laws  of  the  State  of  New- York,  for 
tlio  purpose,  among  other  tilings,  of  constructing  and 
operating  lines  of  telegraph  within  the  United  States, 
and  of  acquiring  such  property  ns  shall  be  necessary 
or  proper  for  that  purpose,  and  it  is  now  and  has  for 
many  years,  been  engaged  ini  the  business  of  opera¬ 
ting  telegraph  lines  within  the  United  States.  ^ 

Second.  The  defendant,.  The  Western  Union  Tele-  .; 
n-apli  Company,  is  a- corporation  incorporated  under 
said  laws  and  for  the  same  purpose,  and  :lins  its 
principal  office  in  the  City  of  Now-York. 

1  Third.  On  the  first  day  of  October,  1870,  the  de¬ 
fendant,  Edison,  made  and  ,  entered  into  a  contract 
with  one  George  Harrington,  of  which!  a  copy  is  an¬ 
nexed  hereto  and  made  part  of  this  complaint,  mark¬ 
ed  A. 

Fourth.  In  pursuance  of  said  agreement^as- this 
plaintiff  is  informed  nnd  believes,  'the  said  Harring- 


ton  advanced  large  sums  of  money  to  said  Edison; 
amounting  to  over  forty  tliousnnd  dollars,  in  con¬ 
sideration  of  which,  and  the  more  fully  to  fulfil; 
and  carry  out  the  said  agreement,  the  said  Edison,’; 
on  the  fourth  day  of  April,  1871,  executed  and  de¬ 
livered  to  said  Harrington  a  power  of  attorney  and 
assignment,  of  which  a  copy  is  annexed,  marked  B. 

Fifth.  At  the  timo  of  tho  execution  of  such  power  I 
of  attorney,  which  was  duly  recorded  in  tlio  united 
States  Patent  Oflico  May  0,  1871,  tlio  defendant,'  ] 
Edison,  as  this  plaintiff  is  informed  and  believes,  had  \ 
arranged  in  his  mind  tlio  process  and  means,  the  com;.' ' 
binntion,  powers  and  machinery  embodied  in  tlio  npv 
plicntions  hereinafter  mentioned,  and  liad  developed. 
them  so  far  that  lie  was  confident  of  ultimate  suc¬ 
cess,  and  pursued  his  investigations  and  experiments 
with  the  assistance  of  said  Harrington,  with  energy  : 
nnd  industry,  and  in  a  shop  in  Newark,  equipped  and 
furnished  at  said  Harrington’s  expense. 

Sixth.  On  or  about  tlio  first  day  of  January,  1875,  ' 
the  said  George  Harrington,  on  his  own  behalf;  and' 
as  attorney  for  the  said  Edison,  executed  and  deliv*. 
erect  to  Jay  Gould  tlio  deed  of  assignment;  bearings 
date  that  day,  of  which  a  copy  is  annexed  hereto, 
marked  C. ;  and  on  the  ninth  day  of  March,  1875,  ho 
executed  and  delivered  to  said  Gould  tlio  deed 
of  assignment,  of  which  a  copy  is  nnnexed,  .marked 
D.,  both  of  winch' were  recorded  in  tho  United  States 
l  atent  Office  March  31,  1875;  and  the  said  Gould 

..  W<^  hy  Ed^om  W  CXUCUii°n  "“incd  ",l| 

so °-'  tho  Io“,rth  d"y  ot  January,  1875,  tlio-; 
thon^d ToliLCP"8nTUon  ot  tho  sum  of  thirty 
Gould  <li,1  v  ’  tWl"0ll  \VI13  l»,id  him  by  said, 
.wil  l  oxeont«  nna  deliver  to  said  Gould  tlio.- 

SSSBSW* 


On  the  sixth  day  of  January,  A'.  D.  1875,  the  said 
Edison,  by  the  said  Jay  Gould,  Ills  attorney,  in  con¬ 
sideration  ot  the  said  sum  of  thirty  thousand  dollars 
so  to  him  paid,  as  aforesaid,  did  execute  nnd  deliver 
to  Samuel  M.  Mills,  of  tlio  City  of  Brooklyn,  an 
assignment  in  writing  under  seal,  whereby  ho  as¬ 
signed  and  transferred  to  the  said  Mills  nil  tlio  right,  9 
title  and  interest- ot  said  Edison,  .in  nnd  to  the  appli¬ 
cations  hereinafter  mentioned, .and  in  and  to  all  in- 
vi.-tilious  and  improvements  relating  in  any  way  to 
Duplex  and  Quadrupled  Telegraphs,  and  in  any 
Letters  Patent  for  any  such  inventions  or  improve¬ 
ments. 

On  the  eleventh  day  of  January,  A.  D.  1875,  tlio 
said  Mills,  by  an  instrument  in  writing  under  his 
band  and  seal,  assigned  nnd  transferred  to  this  plain¬ 
tiff,  in  consideration  of  the  sum  of  thirty  thousand 
dollars  to  him  in  hand  paid  by  tins  plaintiff,  all  his 
l  ight,  title  nnd  interest  in  and  to  said  inventions  and 
improvements,  and  in  tlio  applications  for  tlie  same, 
and.the  Letters-Putent  that  might  be  issued  therefor. 

Eighth.  Ou  or  about  the  19th  day  of  July,  1875, 
the  said  Jay  Gould  executed  mid  delivered  to  this 
plaintiff,  for  a  valuable  consideration,  an  assignment 
of  all  liis  interest  in  Duplex  and  Qimdruplex  Patents 
-or  applications  for  patents  relating  to  Duplex  or 
•Quadruplex  Telegraphy,  which  assignment  was,  on 
tho  eleventh  dny  of  April,  1870,  tiled  for  record  in  - 
the  United  States  Patent  Office.  None  of  the  in-  10 
ventions  therein  described -nnd  none  of  those  de-  ■ 
.scribed  in  the  applications  hereinafter  mentioned 
■  were  made  ;for  the  gold  and  stock  company,  Du¬ 
plex  and  Quadrupled  Telegraphs, .  so  called,  are  a 
mode  of  telegraphy  by  which  electrio  oiirrents  can  bo 
transmitted  in  the  same  directions  and  in  the  opposite 
-directions  at  tlie  same  time,  over  the  same  wire  ;  nnd 
•tlio  number  of  messages  which  in  a  given  time  can  be 


transmitted  over  the  snmo  wire  is  thus  more  than 
doubled,  nnd  the  speed  with  which  messages  received 
for  transmission  can  bo  transmitted  is  in  like  manner 
and  to  the  same  extent  more  than  doubled. 

The  system  of  duplex  and  quadruples  telegraphy 
is,  and  has  been  sinco  1870,  therefore  properly  called, 
and  is,  in  fact,  a  system  of  fast  telegraphy,  and  is 
especially  adapted  to  bo  used  in  connection  with,  nnd 
is,  in  fact,  applicable  to  the  automatic  system  of  tele¬ 
graphy.  This  plaintiff  is  informed  nnd  believes,  that 
the  inventions  and  improvements  mentioned  and 
described  in  the  applications  hereinafter  specified, 
are  useful  and  valuable  additions  to  the  automatic- 
system  of  telegraphy,  nnd  to  the  instruments  nnd 
machinery,  constructed  by  the  said  Edison,  for  the- 
purpose  of  developing  the  same  into  practical  use ; 
and  the  said  inventions  are  adapted  for  the  purpose 
of  successfully  and  economically  developing  the  said 
automatic  system  of  telegraphy  into  practical  use, 
and  are  applicable  to  the  same,  and  to  mechanical. 


Ninth.  On  the  nineteenth  day  of  August,  1874,  the 
snid  Edison  executed  seven  applications  for  Letters 
Patent  of  the  United  States  of  America,  for  certain 
improvements  in  duplex  telegraphs,  which  said  ap¬ 
plications  were  dated  that  day,  and  were  numbered, 

respectively,  94,  95,  90,  97,  98,  00,  100,  and  the  samo- 
were  thereupon  tiled  in  the  United  States  Patent 
Office.  And  the  said  Edison,  ns  this  plaintiff  is  in¬ 
formed  nnd  believes,  at  the  same  time  complied  in  all 
respects  with  the  provisions  of  the  law  in  such  case- 
made  nnd  provided.  This  plaintiff  is  informed  nnd 
believes,  that  on  the  14th  day  of  December,  1874,  tlie- 
snid  Edison  executed  an  application  for  Letters 
Patent  of  the  United  States,  for  a  certain  improve¬ 
ment  in  duplex  telegraphs,  which  application  was- 
numbered  112.  On  the  24th  day  of  February,  1870, 


lie  executed  an  application  for  Letters  Patent  of  the 
United  States  for  an  improvement  in  qundruplex 
telegraphs,  which  application  was  numbered  113. 
The  said  last  mentioned  applications  were  filed, 
shortly  after  their  dates,  in  the  United  States  Patent 
Office. 

And  the  said  Edison,  at  the  same  time,  complied 
in  all  respects  with  the  provisions  of  the  law  in  such 
case  made  nnd  provided. 

Tenth.  On  the  nineteenth  day  of  August, 1874,  the 
defendant,  Edison,  in  violation  of  his  agreement  with 
the  said  Harrington,  hereinbefore  averred,  and  with¬ 
out  his  consent,  executed  nnd  delivered  to  the  de¬ 
fendant,  Prescott,  an  agreement,  of  which  a  copy  is 
annexed, , marked  F. 

Eleventh.  The  said  Commissioner  of  Patents,  after 
receiving  said  applications,  proceeded  to  consider  the 
same,  and  determined  that  the  said  Edison  was  the 
first  inventor  of  the  improvements  therein  described, 
and  that  the  same  were  new  and  useful,  and  that 
letters  patent  of  the  United  States  should  be  issued 
for  the  said  improvements,  nnd  each  nnd  every  of 
them. 

Twelfth.  On  the  23d  day  of  January,  1875,  the 
said  Edison  did  present  to  the  Commissioner  of  Pat¬ 
ents  a  letter  signed  by  him,  in  which,  recognising  the 
inference  of  the  Commissioner  of  Patents  that  he  had, 
according  to  the  forms  of  law,  requested  that  letters 
patent  should  issue  to  himself  and  Prescott,  lie  re¬ 
voked  the  request  that  letters  patent  of  the  United 
States  should  issue  to  himself  and  the  said  Prescott, 
nnd'recitinghis  prior  agreement  with  said  Harrington, 
requested  that  letters  patent  of  the  United  States,  for 
the  improvements  mentioned- in  said  application, 
should  issue  to  himself  and  said  Harrington.  The 
.  snid  Harrington,  at  the  same  time,  presented  to  the 
said  Commissioner  a  petition,  in  which  lie  averred 


tlio  said  assignment,  bearing  date  April  4,  1871,  and 
prayed  for  the  issue  of  letters  patent  to  himself  and 
Edison,  as  the  said  Edison  had  requested  in  his  said 
16  letter.  Copies  of  said  letter  and  petition  are  annexed 
hereto,  and  marked  G.  and  II.  respectively. 

Thirteenth..  The  said  Commissioner  did  (hereupon 
determine  that  the  legal  title  to  said  applications, 
numbered  04,  OS,  00,  07,  08,  00,  100,  and  the  im¬ 
provements  described  therein,  was  in  the  said 
Prescott  and  Edison,  and  that  he  had  no  power  to 
take  testimony  in  respect  to,  or  to  examine  in  any 
way  into  the  equitable  title  to  the  said  improvements, 
and  the  qnestion  of  title  thereto  must  be  determined 
by  the  courts.  And  lie  directed  Hint  letters  patent  of ' 
tile  United  States  should  issue  to  the  said  Prescott  and  ■ 
Edison  for  the  said  several  improvements.  And  the 
said  Prescott  claims  that  letters  patent  tor  the  inven- 

16  tions  and  improvements  described  in  all  of  said 
applications  should  be  issued,  and  is  urging  the  said 
Commissioner  of  Patents  to  issue  the  same,  and  the 
same  will  be  issued  and  delivered  to  tlio  said 
Prescott  and  Edison  unless  prevented  by  the  in¬ 
junction  of  this  honorable  court.  The  issuing  of  the 
said  letters  patent  to  them  would  work  irreparable 
injury  to  this  plaintiff,  and  one  which  could  not  be 
compensated  in  damages.  It  is  impossible  to  de¬ 
termine  in  money  the  value  of  said  improvements; 

but  the  same  are  of  great  vnlue,  and  materially 
facilitate  and  expedite  the  transmission  of  tele¬ 
graphic  messages.  If  such  letters  patent  for  the 

17  said  improvements  are  issued  to  said  Prescott  and 
Edison,  they  will  have  the  record  titlo  thereto,  and 
may  dispose  of  the  same  to  a  bona  tide  purchaser 
for  value,  unless  prevented  by  injunction.  And 
although  by  the  terms  of  the  said  alleged  assignment 
of  Edison  to  Prescott,  .which  the  Commissioner  of 


[Patents  has  assumed  to  consider  an  application  by 
-jildison  that  said  letters  patent  shall  issue  to.  Pres- 
Bcott  and  Edison— one  of  said  parties  cannot  dispose  18 
§|of  any  interest  therein  without  the  written  consent 
Hof  the  other— and  other  conditions  are  named,  yet 
fftho  said  conditions  cannot  be  introduced  into  letters 
{patent,  and  will  not  appear.on  the  face  thereof. 

‘i  The  defendant,  Serrell,  is  the  attorney  of  record 
for  the  said  Edison  and  Prescottin  the  snid  several  ap- 
Iplica tions  to  the  snid  Patent  Ollice,  andisproseouting 
ft  ho  same  for  them  ;  and  in  the  ordinary  course  of 
{business  in  snid  office, .  the  said  patents,  when  issued,  10 
Twill  be  delivered  to  him,  and  all  correspondence  with 
said  office  in  relation  thereto  takes  place  with  him. 

Fourteenth.  Tho  plaintiff  further  avers,  upon  in¬ 
formation  and  belief,  that  snid  agreement  between 
the  defendants,  Edison  and  Prescott,  was  executed 
under  the  advice  of  the  counsel  for  said  Prescott, 

•who  was  also  the  counsel  for  the  Western  Union 
Telegraph  Company,  that  the  agreement  aforesaid 
between  him  and  said  Harrington  did  not  include 
duplex  and  quadruplex  telegraphy,  lhe  snicL  Mar-  ^ 
rincton  was  then  absent,  and  the  said  Edison  was 

mi3ed  by  such  erroneous  advice  into  executing  the 
said  agreement  between  him  and  Prescott.  It  was 
made  without  any  valuable  consideration  whatever, 
anil  tlio  said  Prescott  lias  not,  nor  has  any  one  paid 
to  said  Edison  any  money  or  other  value  whatever 
on  account  thereof.  The  same  was  made  upon  the 
faith  of  promises  made  by  said  Prescott  that  lie 
would  assist  the  said  Edison  to  develop  tho  said  in- 
volitions,  and  introduce  the  same,  and  sell  tlie  same 
for  a  sum  or  price  in  some  degree  commensurate  with 
their  value,  and  also  upon  the  terms  and  conditions 
in  said  agreement  set  forth.  But  tlio  said.  Prescott,, 
who  was  then  and  has  ever  since  been  electrician  of 
the  Western  Union  Telegraph  Company,  did  not  in 
good  faith  carry  out  and  perform,  the  suid  promises, 
terms  and  conditions,  but  fraudulently,  and  with  the 
intent  and  design  to  benefit  his  employer,  tlio  West¬ 
ern  Union  Telegraph  Compnny,  to  tho  detriment  and 
injury  of  said.  Edison,  and  to  compel  him  to  join  a 
(with  said'  Prescott  in  executing  a  conveyance  to  tho 
Isaid.  Company  for  a  small  and  totally  inadequate' 
[consideration,  did  wilfully  violate  tlio  said  promises, 

*•  and  conditions  in.  tho  following  particulars: 


" _  | _ 


!•  He  did  not  furnish  tlio  said  Edison  any  money 
or  assistance  of  any  kind  in  and  nbout  developing 
tlio  said  inventions  and  introducing  and  soiling  tho 
saino  oxcopt  as  hereinafter  stated. 

2.  Ho  did  pay  tlio  fees  required  by  l;nv  upon  filing 
the  said  applications,  and  did,  in  tlio  fail  of  187-i, 
assist  the  said  Edison  to  obtain  tlio  use  of  some  of  tile 
wiros  and  machinery  of  the  Western  Union  Telegraph 
Company  for  tlio  purpose  of  experimenting  with  the, 
8aui  m volitions  and  improvements ;  but  as  soon  as 
tlio  machines  embodying  tho  same  proved  successful, 
ho  allowed  and  undertook  to  license  tho  Westorn 
Smpv0 loSrap|1  Company  witliout  tlio  consent  of 
saul  Edison  to  uso  tlio  same,  and  they  linvo  ever 
s  ice  been  used  by  said  Company  to  its  great  profit 
and  ad  vantage,  without  the  payiiient.of  any  consul- 
co!,se!!t  lt'1Ver  l°  0,0  saill^son.  «nd  without  his' 

with  th«T-n  U"{  si,id  Eaiaon'  >“  tllu  fall -of  1874,  was/; 
not  ifimr^ knowledge  and  consent  of  said  Prescott,  no- 
1,11  tll“  said  last  mentioned  Company  for?: 
describe,/?.,  »  PiF  Sllld1.lml?10'’cments  and  inventions 
noTnromotn  Tin/  apP1(,catl0'1?.  lll«  said  Prescott  did? 
the  contr?, •?  I*!01  aafalat  “!  .8aid  »o?otiations,  but  on 
ari  ft  n  l  ?  '  combined  witfi  tlio  President  of 
to  iink,?1/’  7  '0.!vaa  actil‘g  011  its  bclialf,  to  ref, iso 
to  uwico  any  dohnito  olTor  to  said  Edison  nnd  tn 

tious  U!iil  tiio  ^Imn  decisi°11  ul)ou  saidnegotia: 

S:  ,  U,,  “.!ould  bo  Educed  by  the 

pilce  f  °  80,1  sald  m',L‘i‘tions  fora  nominal 

thoklSwtedl^nW'^  0ldared;?f  sold  Edison (witli 

negotlntfons  immtf  pl'om,8ed  to  complete  tlio  said; 
that  purpose  Tlnf/mi  m®8  to  put  *dm  hi  funds  for 
and  incurred  liabilities  hull011  SpanU11  ot  said  moiioy; 
of  seven  Csan d dollars ,to  oxto,l 

tlui  facts  herc4nbe?ota°vetd  nTMU  lm°'vi'4 
end- connivance  of  said  $ 


6aid  negotiations,  in  tlio  expectntion  and  belief  that 
lie  would  be  .thereby  compelled  to  accede  to  term! 
for  tlio  sale  of  said  improvements  much  below  theft 
real  value. 


and  authorizing  tho  said  last  mentioned  Company  to 
manufacture  other  machines  embodying  tlio  said  im¬ 
provements,  and  assisted  and  directed  in  and  nbout  28 
the  said  manufacture,  and  tlio  said  Company  1ms 
actually  manufactured,  or  caused  to  be  manu¬ 
factured,  many  machines  embodying  tiie  said  im¬ 
provements,  and  is  now  using  the  sumo  witliout  tlio 
consent  of  said  Edison,  mid  witliout  paying  him  any 
compensation  therefor,  and  to  the  great  profit  and 
advantage  of  said  Company. 

Fifteenth.  Thereupon  tlio  said  Edison,  ns  lie  law¬ 
fully  might,  elected  to  rescind  tlio  said  agreement 
witli  Prescott,  and  exeouted  tlio  instrument  aforesaid,  20 
marked  G.,  and  caused  tlio  sumo  to  be  forthwith 
filed  in  the  United  States  Patent  Office,  together  with 
the  said  petition,  marked  H. 

Sixteenth.  The  defendants,  Prescott  and  tlio  West- 
ern.Union  Telegraph  Company,  lmd  notice  prior  to 
Julyl,  1874j.of  the  agreements  aforesaid  between  1 
said  Harrington  -and  tiie  defendant,  Edison.  Tile 
last  mentioned  Company  now  claims  to  be  (lie  owner  (j 
of  tlio  inventions  and  improvements  mentioned  in  -  ' 

said  applications,  by  virtue  of  some  alleged  agree-  L30 
meat  between  itself  and  the  said  Prescott  and  Edi¬ 
son,  tlio  precise  nature  of  which  is  unknown  to  this 
plaintiff.  But  tho  said  Company  never  closed  or 
consummated  the  said  alleged  agreement  until  after 
the  said  agreement  with  said  Prescott  was  rescinded 
ns  aforesaid,  nor  until  after  the  snid  instruments 
marked  G.  and  H.  were  filed  in  tho  United  States 
Patent  Office,  tior  was  the  same  made  with  tlio  con¬ 
sent  of  tiie  snid  Harrington,  or  tho  said  Gould  or  this 
plaintiff,  nor  did  this  plnintiff  know  or  suspect  tho  31 
same  until  after  tho  first  day  of  February,  1870 ;  nnd 
this  plaintiff  is  informed  and  believes,  that  neither 
snid  Gould  nor  snid  Harrington  knew  of  the  same  until 
:  after  said  last  mentioned  day.  •  ‘ 

|  i  Seventeenth.  The  snjd  Edison,  immediately  after 


the  rescission  of  said  contract  with  Prescott  as  afore, 
said,  offered  to  return  to  him  and  to  said  Western 
Union  Telegraph  Company  all  sums  of  money  cx*' 
pended  by  them  respectively  in  pursuance  of  said 
contract,  or  upon  the  faith  thereof,  but  they  and  each 
of  them  refused  to  receive  the  same  or  any  mrt 
•  thereof.  J  ‘  * 


1.  That,  the  defendants,  and  each  of  them,  and 
SSt  attorneys  and  agents,  may  be  eujomed  and  re,  • 

‘•d  dlV‘nS  tll.0  pendency  of  this  suit  from  pro- 
nfflm?  n “r  ,lPPllcat}°!13  for  letters  patent,  or  any 
of  them,  or  from  receiving  letters  patent  upon  any 
meats  tu  .aPlJllcnt‘0»s.  or  for  any  of  the  improve- 
ments  therein  described,  or  from  selling,  disposing 
fcum  ^.th0  same  in  any  way,  and  that 
mJ  tmnsmn1  t°'t  lem  execute 

twi,  ns?  •  tll(3  sa,d  Commissioner  a  request 
sahl 1  i  f  f  0  g  letters  patent  upon  the 
said  applications,  or  any  of  them,  until  tho  questions 
as  to  tho  title  thereto  be  determined  in  this  Action 

2.  That  the  said  defendants,  Prescott  and  The 

further  prosccutiL  the  sSl  nn.^  1  -,i8  court  f,0ln 
scribed  therein  f 

to  execute  such^mfh^  b° 

applications.  ,  inventions  described  in  said 

•  5>  T1’at  th«  Pontiff  may  have  such  other  or  fut-  ' 


ther  order  or  relief  as  may  be  just,  together  with  the 
costs  of  this  action. 

McDaniel,  Lu.umis  &  Soutiiei:, 

Plaintiff's  Attorneys. 


City  and  County  of  Nm-  York,  ss. : 

Thomas  T.  Eckert,  being  duly  sworn,  says,  that 
lie  is  President  of  tile  above  named  plaintiff ;  that 
ho  has  read  tho  foregoing  complaint  and  knows  tho 
contents  thereof,  and  that  the  same  is  true  of  his 
own  knowledge,  except  as  to  tho  matters  therein 
stated  on  information  and  belief,  and  as  to  those 
matters  be  believes  it  to  be  true. 

Thos.  T.  Eokeiit. 

Sworn  to  before  me,  this  11th  1 


day  of  2fcp3l,  1876.  j 

j-l. 


ut/lio, 
Kings  Co. 


10  cnpitnl  to  bo  furnished  by  tho  party  of  tho  first 
shall  -consist  of  tho  stock,  machinery,  tools  and 
itions  owned  wholly  or  in  part  by  him,  of  which  an 
itory  shall  bo  made,  without  reservation,  but  so  much 
o  stock,  machinery,  tools  and  fixtures  partly  owned 
.  I1?!1?  'I'0  hrst  part  and  in  part  owned  by  ono 

lam  Unger,  as  aro  now  located  and  in  uso  at  the 
er  place  ot  business,  at  Number  Fifteen  Bnil-Uond 
l,,e>  Newark,  Ncw-Jerscy,  shall  bo  allowed  to  ro- 
there  for  uso  by  tho  parties  hereto,  and  tho  said 
atn  Unger,  under  tho  linoxpired  piirtnorship  ns 
ng  at  tins  date  bctwcon  Edison,  party  of  tho  first 
and  tho  said  William  Unger,  but  snid  Bliop,  ina- 
J  ,  tools  and  fixtures,  known  as  No.  15  Bni'l-Rond 
ue,  shall  not  bo  used  ns  a  place  of  general  inaiiu- 
Ifnm.'f"  ,°r<  <irf  ,0,tl'e  de,rimt:llt  of  interests  of' 
....... f.._...,y  to  bu  established  and  known  as  tho- 

can  Iclcurnpli  Works,”  under  the  auspices  of 
0 1  bo  owned  by  the  parties  to  this  indentnro,  it  being 
^  ‘l1111  tl‘o  gcnoriil  mnnuructiir^.: 

T,?inCU"‘i  18  ,0  **“  transferred  to  tlio 
a,. ,  I  ^  "T"1.’ 1  "u,l<8>  to  lu  established  under  this 

!'°  tnil|ster  of  the  title  to  tho  stock,: 
tmrlhv  tl  n.  n-  UrCf  *ln<1"lvu"tions  owned  wholly 
'stand  «!.?,!  “f  f'.L'  f!r8t  l,1,rt  to  tho  parties  of 
■o, rations  lo,  bo  ,lu,d  them  in 

1  kirnislK.,!  ,  i  1  •“  to  tho  amount  of 

cd  s  n  ,  „ !“  ll,0TJ  8‘,'l'"l«ted.  shall  bo  taken  and 
•plied  by  the^ party  “of  Urn  ffipru"  “npitnl  ^ 

nd  ift'ten'uo?  tlra  •' >ftrt  81,8,1  B'vo  '»«  whol^ 

ss  ,  '  c  0  '  n  :,"vo,,tivo  P°",0r8  to  tho 
paities  to  .my  di.-i.f  nlld  admit  no 

veutions  or  Lurov  .,  ‘"dlr,i,!,t  i,,t<!re8t  »>  “»d  t0 

tcept  as  heroin  na?  ?'!  I".lul°  or  *°  ho  made  by 
and  belong  to  tho  panief  ol'  'll’  bJt  *"  s,lcl1  81,1,11 
is  above  set  forth  L#h  ■  °  1 10  l,ret  ""<•  second. .; 
'  sixth  of  this  indnninlo  l'tPl)0,;tio"  ns  sot  forth  in 
I'eiitinns  uiiido  oxclusivn’l  ?rov.,dod>  however.  That 
'»y,'vhicd,,  nndcFa  com  „ra'it  ,oGold  n,,d  Stock.  ? 
»t  part  and  Hr.  Marslmi'V ‘«t  between  snid  parly  ot  , 
ty  ol  tho  Gold  and  Stock^Con',!.8.."^'  to,bo  tbc  8°l0  i 
°d  in  this  Agreement  Hutu  not  to  bo 

brst  part  binds  liiniBolf  uoM  8a.^Ediaon  or  party 


parties  whatever,  without  the  consont  of  tho  pnrty  of  tho 
iccond  pnrt  hereto,  any  invention  or  improvement  that 
nay  be  useful  or  dcsiro'd  in  automatic  telegraphy.  And 
irovided  further,  that  for  any  original  inventions  or  im¬ 
provements  that  tho  party  of  tho  first  part  may  mnko 
other  than  such  ns  mny  bo  suggested  or  nriso  from  the 
current  work  in  tho  manufactory,  there  shall  bo  allowed! 
and  paid  by  the  firm  to  the  pnrty  of  tho  first  pnrt  al 
reasonable  and  proper  compensation  therefor,  nccnrdingl 
to  its  practical  vuliie,  all  things  considered.  Such  pay- 1  47 
inont  to  be  in  addition  to  and  irrespective  of  tho  propor-l 
tionate  pnrt  of  the  profits  of  tho  business  of  tho  firm  to 
which  tho  pnrty  of  the  first  part  would  bo  otherwise  on- 
titled. 

And  it  is  further  agreed,  that  if  any  disagreement 
shall  nriso  ns  to  tho  sum  which  mny  bo  claimed  ns 
11  reasonable  and  proper”  to  bo  pnid  for  such  original  in¬ 
ventions,  tho  question  shall  be  referred  to  an  arbitrator, 
or,  if  preferred  by  oitlior  of  tho  parties,  to  three  disinter¬ 
ested  pnrtics,  ono  to  bo  chosen  by  each,  and  a  third  by  tho  48 
two  thiiB  chosen,  and  whoso  decision  shall  bo  final  and 
binding  upon  both. 

Sixth.  That  all  profits  arising  from  the  business  of  tho 
firm,  and  from  all  inventions  and  improvements,  and  from 
tho  manufactory,  shall  be  divided  between  tho  parties  ns 
follows:  One-third  thereof  to  tho  party  of  tho  Hrst  part, 
and  two-thirds  to  tho  pnrty  of  tho  second  part ;  nnd  all 
taxes,  rents,  insurance  and  other  expenses,  and  all  losses 
or  damages,  if  any  such  shall  occur,  shall  bo  paid  from 
tho  general  rccoipts  of  tho  firm  arising  from  its  business:  40 
if  (hero  shall  be  nienfiicioiit  rccoipts,  tho  deficiency  shall 
bo  supplied  by  the  parties  lioreto  in  tho  ratio  of  ono- 
third  nnd  two-thirds,  or  shall  bo  taken  from  tho  cnpitnl  of 
the  Company. 

Seventh.  Tho  partners  shall  bo  allowed  and  paid  from 
tho  gross  revenues  arising  from  tho  business  a  sum 
oqunl  to  fifteen  per  cent,  upon  tho  capital  pel  milium,  to 
bo  divided  into  monthly  payments,  nnd  a  like  per  centum 
on  moneys  advanced  by  either  pnrty  ovor  nnd  nliovo  their 
proportionate  parts  of  tho  capital  as  above  60t  forth,  and  go 
nil  excess  of  profits  shall  remain  in  tho  treasury  el  tho  • 
firm,  to  bo  appropriated  to  tho  enlargement  of  tho  works 
nnd  manufactory,  litid  extension  of  the  business  as  may 
■from  time  to  timo  bo  agreod  upon.  Otherwise  than  ns  sut 
forth  in  this  section,  there  shall  bo  no  moneys  or  property 
belonging  to  tho  firm  withdrawn,  taken  or.  uiod  by  eitiior 
.partner  oxcopt  upon  tho  written  consont  of  both  partners. 


Eighth.  Tlio  piirty  of  tlio  first  pnrt  shall  Imvo  tlio  064- 
trol  and  direction  of  tlio  manufactory,  niid  shall  employ 

61  and  dismiss  (ill  workmen,  na  lio  slmll  doom  best  for  tlio- 
interests  of  tlib  firm  ;  sliall  pnrclinso  nt  lowest  cash  prices 
without  commission,  tlio  machinery,  tooln,- stock  nnd  otliet 
necessaries  required  in  tlio  manufactory,  lind  generally 
shall  bo  responsible  for  the  careful  preservation  of  the  • 
machinery  and  property  of  tlio'  Company,  and  tlio  ctS- 
rforiiicnl  conduct  of  tlio  manufacturing  part  of  tlio  busi¬ 
ness.  But  tlio  manner  of  keeping  tlio  accounts  and  boob- ' 

6f  the  firm  rind  manufactory,  ana  tho  employment  of  p6f- 
sons  required  in  keeping  such  accounts  and  books,  rind  all 

62  that  relates  to  the  financial  affairs  Of  tlio  firiu  and  bust 
ness,  nnd  the  disposition  of  tho  proceeds  of  the  ninnnfno- 
tory,  shall  bo  performed,  or  approved;  controlled  and 
directed,  St  his  option,  by  tlio  party  of  tlio  Sfcttrid  part,  . 

Jfinth.  TlieroBlinii  bo  lio  notes  given  nor  any  liabilities, 
created  by  any  member  of  the  firm  without  the  previous 
assent  of  both  tho  partners. 

Before  contracts  shall  be  entered  info  for  fhe  iiiamifac-  i 
taro  of  any  given  number  of  articles,  it  shall  bothedutyof 
the  parly  of  the  iirst  part  carefully  to  estimate  tho  whole 
amount  of  moneys  that  will  lio  required  to  fulfill  such 
com, act  if  made,  and  the  length  of  time  that  will  lie  re¬ 
quired  to  produce  the  urticles  wanted  ;  and  such  cstimafo 
shall  be  submitted  to  the  party  of  the  second  part  in  order- 
la  to  "'r  'V  10  condition  of  tlio  firm  is  such 

“  J«st'fy  tho  outlay,  and  whether,  when  making  tho  . 
conti uet,  it  should  not  bo  provided  iiisucli  contract  for  - 
nd  anees  te  he  made  by  tho  parties  for  whom  tho  work.  . 
hefOTebeompTe,tio.,!,1'01>0rtl0'‘  08  tl,c  work  progresses  and. 

Bi  bvttM1  rr"*  6lm."  1)0  kcl,t  of  business  doiio-"- 
sales  V  ,  11  ln,"E»e"uhsof  pnrehasd,  miinnliictiiro, 

mcor’dld  in  .i,""d  l"?'"'c!lt8  8111,11  ho  clearly  and  fully 
of  whatever  ,10'  '  “  detllllcd  nccoinit  of  all  oxpcnscs 

'counts  shall  «>  ,,n '!•“  {■•■»*.■»<  the  books  and  u co¬ 
partner.  «  1  mcs  °>lcn  fo  ,l,°  inspection  ol  either  i; 

66  big,  Or  in  aiiv  wisn  „!?" ! .  *=°>  hmoiigmg  to  or  concern-  ■*; 
bis  ess  *  nffeet",g.  said  partnership  or  suidif 

etof^auhe  n'uinufll^uroofalhnn!  rgrcod  •  ,,nd  n"dol>  <  ■ 

re  ot  all  machinery,-  instruments,.  : 


neeessarv  to  developo  inventions  nnd  improvements,  ana 

bo  obtained  by  either  of  tho  parties  hereto,  slinll  bo  mwiu-  66 
Tactured,  made  nnd  filled  lit  arid  from  the  manufactory  to 
beset  up,  created  of  established  under  tins  copartnership, 
add  at  no  tiilier  place,  slibp  or  nmnutactory,  without  tho 
consent  of  all  tlio  parties  to  this  indenture. 

Thirteenth.  It  is  further  stipulated  rind  agreed;  that 
tlio  party  of  tlio  Becond  pnrt  may,  at  his  own  option,  ad¬ 
mit  a  third  party  into  the  find  iipon;  terms  ot  equality 
with  him  nnd’  with,  the  party  of  tlio  hrst  .part,  tot  is  to 
Cay :  To  iih  cfjnril  tl.irtl  iim  t  or  ul  crest  in  all  tlm  mycm 
tioiis,  tittle,  nnichittry,  obis  and  rill  othtt  nwporty  of  the 
firm  till'd  in  tliri  business,  with  oue-tlind  eh.u o  of. 
fits  and  losses  arising  therefrom,  and  oi^\tJiud  bcnLnt, 
and  an  assumption  of  one-third  of  till  the 
firm.  Provided,  that  by  the  admission  ol  such  third  party 
tho  interest  of  the  said  party  of  the  Iirst  part  in  tho  P>  * 
petty  mid  business  ol  tbo  hrm  shall  not  be  lessoned 
thereby,  nor  tlio  stipulations  and  agrco.ueiita  uiia  provi- 
sions  of  this  indenture  changed  or  modified,  except  l  so 
far  as  most  necessarily  follow  tho  admission  of  a  thud  ^ 
....... not.  ni)0„  nn  cqiml  footing  in  interest,  nnd  in  aH  othei 

respects  with  all  t?io  rights  and  privileges,  and  subject  to 
aUPtho  restricti0ns  to  be  enjoyed'  or  asTmposcd  upon  the 
parties  to  this  indenture. 

Fourteenth.  This  partnership  shall  continue f  «  P^f^C 
or  term  of  fivo  years  from  tho  iirst  day,  of  Octoliei,,  re 
eighteen  bnndrcd  arid  seventy,  unless  sooner  dl88olvoj£g/^ 
by  niutiml  consent  of  rill  the  parties.  £..Y 

Fifteenth.  At  the  expirntiori  of  tlio  partrierthip;  oi'  on 
its  final  dissolution,  tlio  property  and 

all  liabilities  of  the  firm  Intimately  created  n  thewarse  W 
of  tho  business;  shall  be  divided  among  tlio' respcctno  J 
nart  iers  actofding  to  their  respective  interests ;  and  m 
mri  ri”v  tto  of  the  partners  shall  die  before  the  expira¬ 
tion  of  the'  partnership,  tlio  surviving  partner  Mpw»^ 
if  thero  shall  bo  mord  than  ono,  shall  account  ioi  ana 
pay  over  to  tlio  executors',  administrators  or  other  jogpl 
representatives  of  such  deceased  partner,  >>>b  Fopmrtion 
of  tlio  moneys  arid  of  tlio  proceeds  of  all  propeity  and 
assets  owned  by  said  partnership  or  firm. 


CO  ' Sixteenth .  Tlio  provisions  of  this  indenture  mny  bo  nil1 
torod  or  modified,  from  time  to  time,  upon  tlio  agreement 
mid  written  consent  of  all  pnrtios. 

In  witness  wlioreof,  tlio  said  Thomas  A.  Edison,  and  tlio 
said  Georgo  Harrington  Imvo  lioroiuito  sot  thoir  hands 
nnd  nfhxed  thoir  seals,  in  tlio  City  of  Now-Fork,  on  tlio 
day  and  date  first  above  written. 

George  Uaiiihnoton,  [seal.1 
i  „  Thomas  A.  Edison.  [seai,.1  f 

In  presenco  of  1  J 

01  J.  IV.  Treadwell, 

Ciias.  S.  Hiooinson. 

Oity  and  County  of  jtfew-Tork,  ss. :  ■';$ 

this  31st  day  of  Dccombor,  1870,  before  me  nor- < 
Edison  i!l’!iTd  Go0rgo  IInrri"St0"  nnd  Thomas  A. v: 
to  hn  ihn  ■  !"°  l>or30llnlb'  known,  and  known  by  ino 
within  irt«t,M  .Vd,Vn  8  d?STbed  in  nnd  "'ho  exeentod  tho 
".othit’^'S,"^,^,^0™1^  neknowludgod  to 

Co  c«*s..U.  Kitchel,  Notary  Public, 

m  and  for  A  cw-  York  City  and  County . 

Exhibit  B. 


Thomas  A.  Edison  a; 


3  Gkoiioe  Harrington. 


Dated  April  4,1871.  '  '¥. 

StaTo'S^&lf;  °f.  }h°  City  of  Newark,  ’ ' 
sidorntions,  to  mo  in’hm  5,or  '.u,n  Vl,bd  n,'d  valimblo  con- , 
tion  of  cortain  civo  m  ,i  d  .n,,U  *"  Turthor  qonsidera-  & 
J*y  Goorgo  San  ,  to  bo  lulfillod,:| 

inmbia,  md  sdpulato  ndil^n^  »  "'•P1011*  Diatriet  of  Co-' «f 
03  for  tlio  said  Harrinotnn  °°i  0  l,,VQ1|t  nnd  construot  0 

I  3a  'nonts  and  machine! v  th!  r  “"d  complete  sets  of  instrn-  p. 
t  1  "oinicnliy  devolopo  into  hr.u !?" V  B"c°°3sfiiUy  mid  eco-  Z 
'  nyjtem  of  aiitom„tic  orPf  f  .,,8°  thoLittl®  mother  ; 

subsequently  to  Im'wwo of  tologrnphy,  and  ‘ 
,lflf  nnd  machinorr  by  aidim?  th»'  J10!*®®1  such  instruments 
f“‘:  ‘or  invonSasoSrto.f,,<>l.n  tiln®  to  time  such 
nbility  ns  an, inventor  and  nt./*?-6-1011  d  do,nnnd,  mid  my  jfc 
ponnit  5  nnd  furthermore  to^nSI*"  "lisllt  suggest  nnd  % 
i  w  1'ieparo,  or  eauso  to  bo  pro- -  4 


pnrod,  tlio  necessary  descriptive  paporB,  tho  models  nnd 
drawings' requisite  nnd  necessary  to  obtain  patonts  for  all 
ouch  inventions  nnd  improvements,  to  bo  tho  joint  pro¬ 
perty  of  the  said  Harrington  and  myself,  nnd  the  pat¬ 
onts  to  bo  issued  to  the  said  Harrington  nhd  myself  in  tlio 
proportionate  interest  of  two-thirds  to  snid  Harrington 
nnd  oiio-third  to  myself,  tlio  whole  to  bo  under  the  sole 
control  of  snid  Harrington,  to  be  disposed  of  by  him  for 
opr  mutual  benefit  in  the  proportions  hereinbefore  re¬ 
cited,  in  such  manner  and  to  such  extent  nB  he,  the  said 
Harrington,  should  deem  ndvisnble,  with  power  to  sell, 
transfer  nnd  convoy  tho  wliolo  or  any  part  of  tho  rights 
nnd  titles  in  and  to  any  or  all  of  snid  inventions  nnd  im¬ 
provements,  as  also  of  tho  patent  or  other  rights  arising 
therefrom;  nnd  tho  Enid  Harrington  having  faithfully 
fulfilled  all  of  tho  covenants  and  stipulations  entered  into 
by  him  :  Now,  therefore,  be  it  known,  that  in  considera¬ 
tion  thereof,  and  of  the  sum  of  one  dollar  to  mo  in  hand 
paid,  1,  Thomas  A.  Edison,  of  tho  City  of  Newark,  State 
of  New-Jei-6oy,  do  by  these  presents  hereby  assign,  set 
over  and  convey  to  him,  tho  said  Harrington,  two-thirds 
in  interest  of  all  my  snid  inventions,  including  therein  all 
my  inventions  of  mechanical  or  copying  printers,  and  ol 
all  the  patents  fur  all  such  inventions  nnd  printers, 
whether  alrcndy  issued,  applied  fur  or  to  ho  hereafter  ap¬ 
plied  for,  and  of  all  and  whatsoever  of  my  inventions  and 
improvements  inado  or  to  be  .made,  and  of  all  tho  patents 
that  may  be  issued  therefor,  that  lira  or  innv  bo  applies 
ble  to  automatic  tclogrnphy  or  mechnnical  printers. 

And  whereas,  I  am  desirous  of  obtaining  tho  co-opera¬ 
tion  and  assistance  of  tho  snid  Harrington  in  disposing 
of  my  eaid  one-third  interest,  ns  before  recited,  and  foi 
tho  purpose  of  united  and  harmonious  action  in  nogo- 
4  dating  for  its  use  or  its  solo  and  transfer  by  or  to  othorE 
in  conjunction  with  his  own,  and  in  such  free  and  un 
restricted  manner  ns  will  tend  to  success,  and  for  the  sum 
of  one  dollar  to  me  in  hand  paid,  tlio  receipt  wlioreof  ii 
hereby  acknowledged :  Now,  therefore,  bo  it  known,  that 
I,  Thomas  A.  Edison,  of4  tho  City  of  Newark,  State  o 
Ncw-Jcrsoy,  bavo  constituted  and  appointed,  and  bj 
tlioso  presents  do  constitute  and  appoint  Georgo  Barring 
ton,  of  the  City  of  Washington;  District  of  Columbia,  mi 
true,  lawful  and  only  attorney,  irrevocable,  with  powo: 
to  substitute  for  mo  and  in  my  nnine.  nnd  in  such  mnnno 
ns  ho  may  tliiuk  best,  to  sell,  transfer  and" convey  all  in; 
rights,  titles  and  interest  in  nnd  to  nny  nnd  all  of  my  sail 
inventions,  and  tho  improvements  thereto,  whether  mndi 
or  to  bo  inndo,  mid  to  sell,  transfer  and  convey  all  of  m; 


04 

f o-y-v-'W 

,  05 

1|  ►vAfWfuivJ 

r  x&ffitX.. 

'■  07 

r 

}  08 


rights,  by  patent  or  otherwise,  arising  therefrom,  already 
mndo  and  obtained,  and  all  such  ns  may  hereafter  bo 
nindo  or  obtained,  and  to  oxccnto  in  full  any  or  all  neecs- 
sary  papers  and  documents  requisite  lor  tho  transfer  of 
title,  and  to  invest  in  otlior  parties  full  and  legal  owner¬ 
ship  therein  ;  hereby  divesting  myself  .of  and  investing 
him,  thb  said  Harrington,  with  all  the  powers  necessary  * 
ill  the  premises  tally  and  completely  to  carry  out  tho  pur¬ 
poses  and  intentions  heroin  set  forth,  herohy  fully  coil-' 
milling  all  that  my  said  attorney  may  or  shall  do  in  tho' 
premises,  as  fully  „s  if  done  by  mo  in  person  ;  and  re- 
suclfnUornevlllllSSi°,10r  °f  P“tOI,U  to  re<!t>S»'8°  liim  ns 
In  witness  whereof,  I  havo  horennto  sot  my  hand  and 

Ai  H|d  nhrl.iea  ’  fn  ‘ !°  jity  f  Ne"'nrk- lottrth  day  of 
Apni,  oiglitcon  hundred  nud  seven t)*-onc.  J 

In  presence  of  T.  A.  Eo.son.  Iseal.]  , 

A.  D.  Comma, 

A.  B.  Oandkk. 

[50  cent  Itov.  . . . 

U.  S.  Patent  Offiok. 

Libm.u:uS™ 

^  sen,  of  t„o 

[official  SUM,.]  Samokl  A.  Uoxoan, 

Admg  Comm'r  of  /‘aienfs. 

Exhibit  C. 

Gaonoa  IIah, u noton  to  Jat  Gould. 

Dated  January  1,  1875. 

tpWl,1T“D.b^8TOl,Thnnlr0  bA°al",?  dat0  tlto  firstpf  Oe-  •: 
Newark,  State  of  New  T  3  A<  Wo  Oily  of 
of  tho  City  of  Washington  Disinter  rfF  f{nrr,inKton'. 
copartners  and  joint  omim?  !  '  C,°  llrablA'  heeanio  -  , 

von  tors,  for  a  poriod  of  ii!!-1,?’  ns  "innufaeturors  and  in-  ' 
section  of  saidP indenture  irnil !  ‘iJd  wlJ°roas‘,  tho  filth  , 

1  shall  admit  no  oSr  ?dci  tl,n‘  ll>°  said  Edison 
“  interest  in  nr  l„  "  .  P!>rtlc!.to  any  direct  or  i.idirnnf  . 


“  shall  admit  no  other  partieaV^03  tlw,‘  1,10  B‘,id  Edisun 
1  ii'torest  in  or  tohnv  itwaUr  b°  W  diroct  o'1  indirect  .... 
lo  bo  mndo  bv  him  "  eS8  °r 'mprovonients  niado 


and  Edison  in  the  proportions  ns  sot  forth  in  section  sixth 
of  said  indenture:  and  whereas ,  tho  sixth  section  of  said 
indonturo  provides  that  tho  proportions  referred  to  in  sec-  73 
tion  fifth  shall  bo  onc-tliird  to  snid  Edison,  and  two-thirds 
to  said  Harrington,  all  of  which  will  moro  fully  appear 
by  refcrouco  to  said  indenture,  a  copy  of  which  is  hereto 
-attached  :  and  whereas ,  in  furtherance  of  the  provisions 
?!  8ftid  .'"denture,  and  tho  purposes  of  said  copartnership, 
tho  said  1  homes  A.  Edison,  by  an  instrument- in  writing, 
benring  date  the  fourth  day  of  April,  A.  D.  1871,  duly 
recorded  in  tho  “  U.  S.  Patent  Ollieo,  tho  Oth  of  May, 

’  1871,  in  Libor  U.  13,  page  4 1 2,  of  Transfers  of  Patents," 
to  which  reference  is  made,  duly  sot  forth  tho  fact  of  said  74 
.joint  ownership  in  his  inventions  in  tho  proportions  of 
one-third  to  said  Edison  and  two-thirds  to  said  Harring¬ 
ton,  and  did  therein  formally  assign  and  sot  over  to  said 
Harrington  nil  undivided  tivo-thirds  of  all  his  inventions 
mndo  or  to  bo  made,  and  then  and  therein  constitute  and 
appoint  tho  snid  George  Harrington  his  true,  lawful  and 
only  ntlorhoy  irrevoeublo,  with  power  to  substitute  for 
him  and  in  his  nntno,  nud  in  such  innnnor  ns  tho  said 
Harrington  may  think  best,  to  sell,  transfer  and  convey 
all  of  his  rights,  titles  and  interest  in  and  to  all  of  his  75 
snid  inventions,  and  tho  improvements  thereto,  whether 
nindp  or  to  bo  mndo,  and  to  sell,  transfer  nud  convoy  all 
ot  Ins  rights  by  patent  or  otherwise  urising  therefrom, 
already  made  and  obtained,  and  all  such  as  may  thereafter 
bo  made  or  obtained,  and  to  execute  in  full  any  and  all 
the  necessary  papers  and  documents  requisite  for  tho 
transfer  of  title,  *  *  etc.,  ns  is  moro  fully  set  forth  in 
snid  instrument  of  writing:  and  whereas,  during  tho  pe¬ 
riod  of  6nid  copartnership  and  joint  ownership,  tho  said 
Edison  mndo  certain  inventions  for  duplex  and  qundru-  70 
plex  transmissions  of  intelligence  at  tho  same  time  upon 
one  nnd  the  same  wire,  known  ns  qnudrnplox  telegraph, 
for  which  applications  for  putunts  have  been  imido  and 
.  are  to  bo  mndo :  nud  whereas,  I,  the  said-  Gcorgo  Har¬ 
rington,  in  the  exorciso  of  my  beat  judgment,  and  in  fur¬ 
therance  of  what  1  deem  the  best  interests  of  the  said 
Edison,  ns  well  as  of  myself,  having  determined  to  dis- 
peso  of  tho  said  duplex  and  qundruplox  inventions  of 
suid  Edison  : 

How,  therefore,  bo  it  known,  that  lor  nnd  in  eonsidora-  77 
tionof  the  sum  of  0110  dollar,  and  of  further  valuable  nnd 
valid  considerations  to  mo  in  hand '  paid,  tho  receipt 
whereof  is  lioroby.  acknowledged,  I,  tho  said  Gonrgo  Bar- ' 
•rington,  of  tho  City  of  Washington,  District  of  CoTninbin, 

Jinvo  granted,  bargained  and  sold,  nnd  by  tlicso  presents 


do  hereby  grunt,  bargain,  sell,  assign,  transfer  and  c 
voy  Onto  Jay  Gould,  of  tlio  City  of  Wew-York,  State 
Now-York,  his  executors,  administrators  and  assigns, 
said  inventions  of  said  Edison,  known  ns  duplex  s 
juadruplex  telegraphs,  together  with  all  the  rights  ti 
ind  interest  therein  nnd  thereto  of  the  said  Thomas 
itdison  ns  tho  inventor  thereof,  and  all  tho  rights,  title  a 
merest  of  the  said  Thomas  A.  Edison  and  tho  si 
ocorgo  Harrington  ns  tho  assignees  of  suid  Edison, 
iitlicr  of  them,  and  all  tho  right,  titlo  nnd  inteicst  uli 
hey  or  either  ol  them  now  have  or  may  hereafter 
[lure  in  or  to  any  letters  patent  issued  or  allowed,  or  tl 
nay  hereafter  he  issued  or  allowed  for  any  such  invi 
ions,  whether  made  or  to  ho  made,  aa  well  ns  to  all  i 
irou’iucntstliat  may  hereafter  he  made,  and  in  or  to  a 
e-issuesorextensuinsof  the  same  or  any  of  them,  tl 

. i  ,,  reliitu  to  duplex  and  qiindriiplex  tc 

dinii^i  i  1  m'°  .,0  lo!'  himself,  his  -cxeeiito 

„l„  „r6,n,.?re  i",,  f°r  his  and  their  own  use  ill 

ehoof  ,o  the  lull  end  of. ho  term,  as  well  the  rene 
„,u"8  •  “|,“,uf.  for  which  letters  patent  ha 

10  sum..  .I?.,  m  1 ter, '"-‘grunted,  as  fully  and  entirely 

"lvV , Vr  t"lll<l  1)11  and  cnjoyi 
|i8 H^miia"  ^  t'"'1 1 J l,ir""pti>n,  or  either  Of  them.  In 
And  f  Il!!!„;,i“  . 11111  fV'  not  keen  made, 
id  ,1K  i  ,  I.  ,,  '■’cul‘ge  tJnrrmgton,  acting  lor  mysol 
Edison  Ki  J  miornuy  of  said  Tliotni 

J  Could  uml",rizu  '"id  empower  the  sai 

'lit  ec  ,,d' . “»<>  "ssigns.  ns  a  vest. 

«  «S, y  p  Edison  for  a 

ever  uiav  L  ,  “ri*''’tngs,  models  nnd  whal 

nta  Can  tRu  United  States  pi 

liether  made  Jj  "'vuitmns  and  improvement 
tmueiits  as  ,nnJc' lllltl  (°r  all  such  further  ai 

id  Jay  Gould  m.  "ems,,lT  or  requisite  to  vest  in  tl. 

11  and  eon  )|!fto8,n|t<'C.",0ln  "^"''listriitors  or  nssigm 

oven, elite  .  &  “  *?  “I1  6,,ul1  inventions  and  hr 
}'  Gould,  or  eutli  oihmt'iHl1"8  “"di  •‘Pl'ointin^  tlicsnii 
io,  lawful  and  onlv  rn,1  011  ,n8  1,0  n,n.V  iiitncnlc,  in; 
substitute,  ns  I  am.  "revocable,  with  powo 

writing  of  A  ih"  do  intho  instrmnen 

5  myself  and  investiim'i^'  '  l)l'foro  r“oilod,  divest 

relates  ii.jS  *11!1'  ‘  ■«  said  Jay  Gould,  in  nl 
>Ph»  and  tie  mom  JS/0  {|ul!,cx  ai,d  qnndrnplcx  telo 
if  exercised  byme  h 'noJlI  11,0  R°«or  in  the  premise, 
Esioiicr  of  Pate,, .  ,'  ,1’“r“on*  "'"j  requesting  the  Com 
0(1  attorney  0f  said  E(1I«°°"I60i  1,8  ,llu  duly  emieti 

i-dison  and  Barrington  in  ull  mat 


-tors  nnd  inventions  rotating  to  duplex  and  quadrnplox 
telegraphy.  Providod,  nevorthless,  that  it  is  distinctly 
understood,  agreed  and  stipulated,  that  this  disposition, 
sale  and  assignment  of  dnplox  nnd  quadrnplox  tolo- 
griiphy,  and  this. deed  of  conveyance  and  transfor,  does 
not  and  shall  not  bo  construed  ito  include  any  inventions 
heretofore  made,  nor  any  patents  heretofore  issued  or  83 
allowed,  nor  any  fiitiiro  improvements  thereof  or  thereto 
for  dnplox  telegraphy  in  connection  with  chemical  tele-  vr 
'.grnpliy ;  but  all  -swell  roirinin  ns  the  property  of  said  Har- 
ringtou  and  Edison,  hud  under  tho  solo  control  of  said  lALuJ 
Harrington,  tho  siuno  ns  if  this  sale,  assignment  and  deed  V  T 
of  transfer 'had  not  boon  made  or  executed.  _  _  OfiVAXr 

u  In  witness  Whereof.  I,  the -said  George  Harrington,  for  . 
myself  and  ns  the  duly  constituted  attorney  of  Thomas 
A.  Edison,  have  horounto  set  my  Iintid  and  seal,  ‘in  the 
Oity  of  Baltimore,  Stnto  pf  Maryland,  this  first  day  of  84 
.January,  A.  D.  187s. 


Gno.  IIakuinciton,  [r..  s.] 
for  myself,  and  as  the  duly 
constituted  attorney  of 
Titos.  A.  Edison.  '  [l.  s;] 


In  presence  of 

Wn.  P.  Cox, 
D.  Doksey. 


Geo.  Haemnoton,  ’[x..-8/J 
'  for  mysolf  and  as  tho 
duly  constituted  attor¬ 
ney  of 

.  Titos.  A.  Edison.  [l.  b.] 

Received  for  record  March  81st,  1876,  and  rccordod 
in  <Libor  0.  ID,  pngo  160,  of  Transfers  of  Patents. 

'In  itostimony  whoroof,  1  lmvo  caused  the  soul 
■  of  the 'Patent  Office  to  bo  horounto  affixed. 
[l.  8.1  iEdmb  Spexu, 

Acting  Commissioner. 


March  9, 1875. 

A tlioiis. 
tlie  City  Of  Washington  Dis,r lit’,  |?,,rrin?t"'' 

87  myself,  „„d  ns  tho  liiilv  V H  Colninbin,  noting 
.  A-  Edison,  did  e^ci  o  n,1!  ,- C'd  nttor"7  °f  Thou 
•lie  City,  County  n“d  StnT«d  rd^,ver %  Could, 
of  assignment :  Stl,,°  °‘  Nc»--York,  n  certain  di 

“  qimdruplM" ", vus' u  r.'tleu  l“d',  ";1,<|rovor  the  wo 
fnrno  by  the  words,  ‘‘ di  pl^1  p.“IcId.  '°  Precede  t 
duplex  mid”  wero  n-  '  l  ’  V1"611  “id  wort 

Places  referred  to,  „  “d  ,he  ,e  ^  °",,t,e.d  bT  «"«  i»  tl 
smd  deed  wns  to  convey  all  iu  ?  ?1  '!",d  menningof tl 
3  myselr  ,,nd  the  snid  &  "  a  ('p  •*  “,l0  ft,,d  ''"terest  < 
manner  pertaining  t  ji'  Edl6T.  *°  or  in  an 
telegraphs :  °  '|,itx  118  well  ns  quadruple 

P  Now  ii  hereafter,  it  is  cy 

said  Geo.ye '  lt?in^u\',,t;'r/Vit''e66«,>h.  'hat  I,  tin 

assw^^aar--"-!!? 

"'."d  paid  °f  ono  dollar"' 


ndmi„Lt,  ,  i  lk’  s,»to  of  v  W  Could,  ol  tho 


tensions  thereof,  for  which  letters  pntent  lmvo  been  or 
may  hereafter  bo  granted,  ns  fully  and  entirely  ns  tho 
sauio  would  linvc  been  or  could  bo  held  and  enjoyed  by 
snjd  Edison  or  said  Harrington,  or  either  of  them,  had 
this  assignment,' snlo  nnd  transfer  not  been  made. 

And  J,  tho  6nid  George  Unrrington,  noting  for  myself 
and  ns  the  lawfully  constituted  attorney  of  snid  Thomas 
A.  Edison,  do  hereby  authorize  nnd.cmpower  the  said  Jny 
Gould,  his  administrators  nnd  assigns,  ns  a  vested  right 
conferred  hereby,  to  call  upon  snid  Edison  for  nil  tho  92 
necessary  specifications,  drawings,  models  nnd  what¬ 
soever  may  be  necessary  to  obtain  United  States  patents 
for  nny  ot  snid  inventions  nnd  improvements,  whether 
made  or  to  be  made,  nnd  for  nil  such  further  nssignments 
ns  mny  bo  necessary  or  requisite  to  vest  in  the  snid  Jnv 
Gould,  his  executors,  administrators  or  assigns,  full  anil 
complete  title  to  all  such  inventions  and  improvements, 
hereby  substituting  nnd  appointing  the  snid  Jny  Gould, 
or  such  other  person  as  he  mny  indicate,  my  true,  lawful 
nnd  only  nttornoy,  irrevocable,  with  power  lo  substitute,  93 
ns  I  am  authorized  to  do  in  nnd  by  a  certain  instrument 
in  writing,'  bearing  date  April  4th,  A.  D.  1871,  mid  exe¬ 
cuted  nnd  delivered  by  tho  said  Thomas  A.  Edison  to  me, 
hereby  divcBting  myself  nnd  investing  him,  tho  snid  Jny 
Gould,  in  all  that  relates  nnd  applies  to  duplex  nnd  qnnd- 
ruplex  telegraphs,  nnd  no  more,  with  nil. tho  power  in  tho 
premises  ns  if  exercised  by  mo  in  person,  nnd  requesting  • 
the  Commissioner  of  Patents  to  recognise  him  ns  the  duly 
constituted  attorney  of  snid  Edison  and  Harrington  in  nil 
matters  and. inventions  relating  to  duplex  nnd  quadra-  94 
plox  telegraphy :  Provided,  nevertheless,  tlint  it  is  dis¬ 
tinctly  understood,  agreed  nnd  stipulated,  tlint  this  dispo¬ 
sition,  sulo  nnd  assignment  of  duplex  nnd  qnndruplox 
telegraphy,  nnd  this  deed  of  conveyance  mid  transfer, 'does 
not  and  shall  not  bo  construed  to  include  nny  inventions 
heretofore  mndo,  nor  any  patents  heretofore  issued  or  nl-  , 
lowed,  nor  any.  future  improvements  thereof  or  thereto  fllui 
for  duplex  telcgrnphyj  in  connection  with  chemical  tolc-  , 
grapliy,  but  all  such  remain  ob  the  property  of  said  Hnr-  jr\  2/,  A/  (7  Hr*,  ^  n 

rmgton  and  Edison,  mid  under  tho  solo  control  of  snid  j. _ * 

Harrington,  tho  snmo  as  if  this  Bale,  assignment  mid  deed  A 

of  transfer  had  not  been  made  or  executed.  .  ***" 


In  witness  whercoi;  I.  the  said  George  Harrtnet 
n.:,d..“Vl10  •*“«««•*  attorney' oTlhou 

Citj  of  iJiillii.ioro,  State*:./ ' MnrylmS?  thU  “ini,  day 
Maicli,  one  thousand  eight  hundred  and  seven iy.Bva? 

Guo.  Haumkotok,  ft.. 

For  myself  anil  ast/iei/uly, constituted 
_  .  .  Attorney  of  Thomas' A.  Edison,  .[t. 


onsiderations  l  do  herel.yacknowledgo,  r  do  hereby  give 
md  grant  unto  Jay  Gould,  of  bho  City,  County  and  Stato 


Ex’d.  F.  II.  II. 


If  Jwwtryi,  1S75. 

•  Edison,  rfirrM0?'  that. whereas,  I,  Tliomai 
'vented  certain  iinnrowmil! »  of,Nu"'' Jersey, -have 

Iplex  toleKia|,,||1s,ltho0dcse|0i|l,Uo I,,,11'0?  ""Provomeilts  in 

we  been  lodged  with  J  \v  o  0  8,,"11^  '"odela  ot  .which 
'<1  State  ol-JNew-Vork  'LSn  ro11,  ol;t|.e'Oity,  Comity 
neats :  U,K>  fur  "bo  purpose  iof  .ojjtuinii.g 

'nthig\o°d°apii«nM:wId|i,,J,g0^!®r,0^0J,!c,',’|nprovoineals 
' 11  "f  which ' I  am  >akoiit  »  ''nP  «  telWvfor 
.teat :  0,11  *°  "mho  npplicatio,,rfoiv)e!tors 

0  rewipttrf.^hjJjJ'^'^°j|^®JJ,,r  to  me  in  .hand  paid, 
well. as  other  .good  mnd.valuuUlo 


if  New- York',  full  and  irrevocable  power  and  authority 
o  sell,  assign,  transfer  and  set  over  unto  any  person,  per- 
ions  or  corporation  any  right,  title  and  interest  m  or  to 
inv  or  nil  of  said  inventions,  or  improvements  relating 
hereto,  or  in,  to  or  under  any  letters  patent  which  may 
jo  granted  to,  or  at  any  time  may  belong  to  me,  relating 
o  [inv  or  all  of  said  Inventions  or  improvements.  And  1  1W 
lo  hereby  also  give 'and  grant  to  said  Jay  Gould  full  and 
rrevocnblo  power  and  authority  to  give  or  grant  nay 
iccnsc  or  licenses  in,  to  or  under  any  or  all  of  said  letters 
patent,  or  in  or  relating  to* any  or  ail  of  said  inventions 
ir  improvements.  . .  r  „ 

And  I  do  hereby  also  give  and  grant  unto  said  Jay 

Gould  full  and  irrevocable  power  and  authority  to  do  and 

perform  all  necessary  acts  in  and  about  tbo  management 
[>f  my  interest  in  said  invention  or  .improvements  ana  let- 
tors  patent,  nnd  each  of  them,  and  in  or  relating  to  any  u 
business  that  may  arise  thereunder,  hereby  uutnorizmg 
and  empowering  him  to  make  and  meet  business  engngc* 
incuts  and  liabilities,  and  to  do  tuul  pmorm  each  auci 
every  act  which  I  or  my  executors,  administrators  «  • 

signs  might  or  could  do  in  relation  to  the  iiiaiingemcut  01 
all  business  transactions  relating  to  said  invention*-, 
provements  or  letters  patent,  or  any  *>t  them.  . 

And  I  hereby  authorize  and  empower  the  said  Gould  to 
demand,  sue  lor,  collect,  receive  and  gtvo  acquittance  and 
relcnseB  ill  my  nnmo  or  otherwise  lor  all  sums  ot  n  )■  10. 
debts  and  demnnds  whatsoever  which  are  or  shall  b  . 
owing  or  belonging  to  mo,  or  detained  troni  me  by  nay 
person  or  persons,  whomsoovor,  and  also  «t  -  J  A  , 
.commence  and  prosecuta  any  and  all  suits  or  net 
law  or  iu  equity  in  my  nnmo  for  the  infringement  of  smd 
letters  patent,  imd  also  to  sign  my  nnmo  to  any 
papers  necessary  for  commencing  and  curry  m  go 
suita  or  actions,  aud  ho  shall  lmve power,  lull  and  inc- 
vocablo,  in  my  name,  to  do  and  poiforni  overy  act  "  10! 

eary  and  proper  in  and  about  said  Bints  and  net' •  , 

1  do  also  hereby  autliorizo  and  empower  the  w  g 
Gould  to  appoint  any  substitute  or  substitutes / '1 ,  hereby 
eretion,  to  do  and  perform  all  or  any  ot  tbo  acts  y 
authorized  j  and  I 'do,  in  such  ease,  bcweby^co  fc  npou 
sucli  substitute  or  substitutes,  each  and  a  1  “J  1  q  1  w  or 
which  1  lmvo  horohy  conferred  upon  mud  Juy  » 

which  mav  hv  him  bo  delegated  to  such  substitute  or 


Articles  of  agreement,  mnde  and  entered  into  this  in? 
nineteenth  day  of  August,  A.  D.  1874,  by  and  be- 
tween  .Thomas  A.  Edison,  of  Newark,  in  the  State  of 
New-Jersey,  and  George  B.  Prescott,  of  the  City  and 
State  of  New-York : 

Witnessotli,  Whereas,  said  Edison  has  invented 
certain  improvements  iu  duplex  telegraphs,  for  which 
lie  has  executed,  or  is  about  to  execute  applications 
forletters  patent  of  the  United  States,  and  such  ap¬ 
plications  are  numbered  04,  05,  00,  07,  08, 00  and  100, 
and  are  dated  August  10,  1874,'  and  said  Prescott  is  108 
entitled  to  an  equal  interest  in  the  same  and  others 
hereafter  mentioned : 

Therefore,  in  consideration  of  the  premises,  and 
the  sum  of  one  dollnr  in  band  paid*  the  receipt 
whereof  is  hereby  acknowledged,  the  said  Edison  lias 
.  sold  and  assigned,  and  does  hereby  set  over  and  con¬ 
vey  unto  the  said  George  B.  Prescott  one  undivided 
half  part  of  the  right,  title  and  interest  of  every  i 
character,  in,  to  and  under  and  connected  with  each 
and  all  the  aforementioned  inventions  and  letters  iqo 
patent  on  the  same,  when  granted,  and  authorizes  and  / 
requests  the  Commissioner  of  Patents  to  issue  the 
said  letters  patent  to  Thomas  A.  Edison  and  George 
B.  Prescott,  as  the  assignees  of  snid  Edison,  for  the 
use  and  behoof  of  themselves  and  their  legal  repre¬ 
sentatives./ 

And  whereas,  the  said  Edison  has  also'  invented 
other  improvements  in  duplex  telegraphs,  the  descrip¬ 
tions  of  which  have  been  lodged  witii  George  M. 
Phelps,  for  thepurpose  of  models  being  constructed,  no 
it  is  hereby  agreed,  that  such  inventions  are  included 
in  this  present  agreement,  and  that,  wlieii  the  applica¬ 
tion  for  patents  are  made,  the  patents  to  bo  granted 
in  accordance  herewith,  and  that  the  snidEdison  shall 
sign  the  required  paper  therefor.  . 

This  transfer isuiado  on  the  following  terms  and 
conditions,  which  are  hereby  niado  part  of  the  con¬ 
sideration  in  the  promises : 

First.  That  both  of  the  parties  shall  have  an  equnl 
undivided  interest  in  all  letters  patent  of  the  United  iii 
States,  or  of  any  foreign  countries,  which  may  be 
granted  for  all  or  any  of  Bnid  inventions,  or  of  any 


nm1UnllnPr°(VOnJe"ta  tllm'oon  raado,  by  either  party 
and  of  all  extensions  and  re-issues  of  nSy  such  & 

pended  si  wli*' r",“r Ti’  Elliso,‘  ll!ls  iwnstoforo  ex- 

•  ^9^JSS£gaS^*&3Si 

patent  for  a„^«ft^&«c“n'W  «f  letters 

113  th'ereto1 K.°l  ZabLd  of  OrooUiLr  5^““  °"t 

>a«n ,?us  "or  sSi  ^  "'il1  Wm«If 

right  in  any  wav  to ,  Smilt  licenses,  nor  tlio 
>'“e  or  self  a  ?  of  Z  °  T  !,a'V0  «'am.facture, 
movements  thereof  „  d  'T'1"0113'  or  :L»y  im- 
artides cental, V  ombodyimr,  or 

meats,  or  nrotorWi  k.?^  &l1^  ^mjtions  or  improve- 
without  the  written  coiiwnMi  °r  1<ittul'3  patent, 

party.  11  C0"SBnt  «rat  obtained  of  the  other 

1W  «£o?  riSt01 tonL°,c» 5"  sfliatj»ventions,  and 
way,  shall  bo  nlade  o  •  thl?  uso  tho  samo  »»  any 
which  both  parties  narco  °in  Z\’;rXa0pt  ?fc  il  l11’*0®  to 
‘Is  shall  be  equal  v  ,?i,  all  not  pro- 

hereto.  1  y  diuded  between  tlie  parties 

{nmjff  binding' Sr Sf  thn  P'oyisipns  of  this  agree- 

m  ? 

sot  their  lmndsUand’  serUs^th  pnr  *°s  Ilavu  hol'onnto 
abovo  written.  euls>  t,le  day  and  vem- 


Witnesses : 

U  a  Kolb  Serkell. 
LK-'UJEL  IV.  SERREht. 


Thomas  A.  Edison,  - 

Georoe  B.Presoott. 


F  REVOCATION  0 


•Commissioner  of  Patents : 

Sir :  .Tlioro  are  on  lilo  in  your  oilico  certain  applU 
cations  for  patents  in  my  name,  as  sole  inventor, 
companied  with  a  request 


kfSC 


. . _  the  patents,  when 

allowed,  to  myself 'a  ml  George  B.  Prescott.  .  _ 

I  made  this  arrangement  with  Hr.  Prescott  under 
an  erroneous  impression.  ,  , 

On  tho  1st  October,  1870, 1  mndo  a  copartnership 
contract  with  Air.  George  Harrington,  and  on  the  4th 
April,  1871,  in  furtherance  thereof,  I  made  to  him  an 
assignment,  coupled  with  ap  irrevocable  power  of 
attorney,  reciting  the  main  provisions  of  the  contract,  117 
both  of  which  are  still  in  full  force  and  effect,  where¬ 
by  the  control  of  theso  inventions  was  placed  in  tlip 
hands  of  Hr.  llamngtoip  . 

Under  and  by  virtue  of  this  power  of  attorney 
and  assignment  therein,  Mr*  Harrington  claims  title 
iu  these  inventions,  and  objects,  and  has  objected, 
to  any  deviation  from  the  said  assignment  and  power 
of.  attorney.  1  therefore  withdraw  my  request  for 
the  issue  of  patents  for  duplex  and  quadruples 
transmission  to  Edison  and  Prescott,  and  unite  with  118 
George  Harrington  in  his  petition,' this  day  hied  m 
your  office,  requesting  tho  issue  of  the  letters  patent 
to  Geo.  Harrington  and  myself,  in  the  proportions  set 
forth  in  tho  power  of  attorney  and  assignment  of 
April  4th,  1871,  and  the  contract  therein  recited. 

Respectfully  yours, 

Tnos.  A.  Edison. 


Washington,  January  23eZ,  1875. 
To  .  the  Commissioner  of  Patents 
Your  petitionor,  a  citizen  of  Washington  City , 


District  of  Columbia,  prays 


J 


•<£' ‘ogssjsar  gw 
arfnsrc,?”  -Ktfeia 

120  dated 

N°-  05,  diffn  ,i:t. . 


“  %  B  &  p  a 
IS  S  £  £  £ 


1  tilioHor  Wafdu!  V  .wn,1?0!' -1'  °f  ®M«moy  (o  your  no-' 
1871,  in  O^Vcty 


r  »«r  poiffi; r  ii&SfaL*  otTn«^s  of  Patent 
paleitf  i  j  {  o  f  1  l’8  tl'ot  ‘lie  letters 
said  tdisou,  in  tlio  inonoi  io„  iS"“  J°  llimself  ‘uirt 
th"0s  (o  llimself  !i  ,J  !  “  "  c  interests  of  (wo- 

Providedinsaidpolv',0^^ £  S!l‘d  .®Hson,  ™ 


»  Mid  power  of  aliornn0  Edis°»>  ■« 
v  01  ••“toniey  and  assignment. 

'  ery  respectfully', 

Cfico.  Hakkijcgtox. 


10V  ®omt 


Geoiioe  B.  Pp.Escorr,  impleaded,  V 


George  B.  Prescott,  for  liis  answer  to  tlio  complaint 


Second. — Denies  any  knowledge  or  information  suf¬ 
ficient  to  form  a  boliof  of  any  of  tlio  allegations  con¬ 
tained  in  tlio  third,  sixth  and'  soronth  articlos,  and  in 
that  part  of  the  eighth  articlo  ending  with  tlio  words 
“  Gold  and  Stock  Company,”  in  tho  9tli  folio. 


Third. — Donios  all  tho  allegations  of  tho  fourth  and 
fifth  artiolos,  and  all  the  allegations  of  tho  eighth  arti¬ 
cle  hoginniug  with  tho  words  “Duplox  and  Quadruples 
Telegraphs,”  in  the  9th  folio, 


4  Fourth.  Admits  tlio  allegations  of  tho  ninth  articlo 
except  tlmt  so  far  ns  the  provisions  of  law  thoro  ro- 
fered  to  required  tho  paymont  of  any  foos  or  moneys 
m  connection  with  tho  applications  tliero  inontionod, 
ho  says  tlmt  tho  truth  is  that  such  fees  and  moneys 
wore  paid  by  himself,  and  in  pursuance  of  tho  ngreo- 
mont  betweou  himself  and  Edison  horeinnftor  referred 
to,  nud  not  by  tho  dofondnut  Edison,  and  that  tho 
amounted  such  fees  and  moneys  paid  by  him  wns  the 

.  Fifth. — Admits  that  onjtho  19th  day  of  August,  1874 

tho  defendant  Edison  did  oxocuto  and  dolivor  to  him 
5  the  agreement  referred  to  in  tho  tenth  article,  and 
alleges  that  said  Edison  had  full  power  and  right  so  to 
do,  and  that  tho  said  agreement  wns  and  is  a  valid 
and  binding  obligation  upon  the  parties  thoreto,  ac¬ 
cording  to  its  tonor;  and  1m  douios  that  such  agree¬ 
ment  was  so  executed  or  delivered  by  said  Edison  in 
violation  of  any  agroemout  on  his  part  with  said  Hnr- 
rington,  or  without  his 'consent. 

Sixth.— Douios  all  the  allegations  of  tho  olovouth 
m  ticlo  and  of  that  part  of  tho  thirteenth  article  ending 
uiththe  words,  “said  several  improvements,”  in  tho 
15th  folio,  except  so  far  ns  they  are  admitted  in  the 
seventh  article  lioreof  ;  and  denies  any  ltnowlodgo  or 
tQ  f0r“  “  belicf  ot  th0  allegations 
of  the  twelfth  and  fifteenth  articles,  except  that  instru-  ,, 
ments  in  tho  form  sat  forth  in  Exhibits  6  and  H  re-  . 

VT’  prior  ‘.°  tllQ  21at  day  of  March,  1876, 
piosonted  to  the  commissioner  of  patents. 

“-d8,10  thar  ^legations  0f  tho  eleventh  and 
th  rteenth  nitic  os  aforesaid,  defendant  says,  on  his 

JanCT87n5  tb  i0tl  ‘  ?**  *°  tho 
conS'ol8 Ji5’  tbo  commissioner  of  patents  lmd  not  ■ 

urtic  o nor  ‘■j0  .“PP^'OMroforred  to  in  the  ninth  . 

chameter  of  H  “med  0nythinS  «*«»  «a  to  tho 
character  of  tho  improvomonts  doscribod  in  them,  or 


ns  to  tho  inventor  of  the  said  improvements,  or  ns  to  7 
tho  issuo  of  iottors  patent  for  oithor  of  thorn  ;  but  tho 
said  commissioner,  after  receiving  the  instruments 
marked  G  and  H,  and  after  tho  19th  day  of  January, 
1875,  did  first  proceed  to  consider  tho  applications 
filed  by  Edison,  roforred  to  in  tho  ninth  nrtiole,  and 
did,  on  or  about  tho  20th  day  of  March,  1875,  render 
his  decision  as  sot  forth  in  Exhibit  J  annexed  to  tho 
complaint. 

Eighth. — Doilies  tho  allegations  in  tho  thirteenth 
article  that  tho  issuo  of  Iottors  patent  to  himself  and 
Edison  would  work  irrepnrnblo,  or  any  injury  to  tho 
plaintiff,  or  any  injury  which  could  not  bo  compensated  8 
by  damages ;  and  tho  allegation  that  said  improvo¬ 
monts  expedite  tho  transmission  of  telegraphic  mes¬ 
sages  ;  and  also  tho  allegation  contained  in  the  last 
paragraph  of  said  article  relating  to  tho  dofcndant 
Sorrell. 

Ninth. — Doilies  that  tho  ngreomont  betweou  himself 
and  Edison,  roforred  to  in  the  fourteenth  articlo,  wns 
oxocutcd  under  tho  ndvico  of  counsol  who  wns  nlso 
counsol  for  tho  dcfondnnt  the  Western  Union  Tele¬ 
graph  Company’;  or  that  such  ngreomont  was  executed 
nndor  tho  ndvico  of  counsel  for  this  defondnnt,  that 
tho  ngreomont  botwcou  Edison  nud  Harrington,  g 
there  roforred  to,  did  not  inclndo  duplex  and  quad¬ 
ruples  telegraphy ;  or  oitlior  of  thorn,  or  that  Edison  . 
was  misled  into  oxccutiug  tho  said  agroemout  betweou 
him  and  this  defendant  by  any  such  ndvico  as  is 
alloged. 

He  admits  that  at  tho  timo  referred  to  in  tho  21st 
folio  ho  was  tho  oloctriciau  of  the  Wostorn  Union 
Telegraph  Company ;  that  ho  did  pay  tho  foos,  and 
assist  Edison  as  allegod  in  subdivision  2,  down  to  aiid 
including  the  words  “said  inventions  nud  improve¬ 
ments  ”  in  folio  28 ;  tlmt  tho  "Western  Union'Tolegraph 
Company  paid  Edison  $5,000  (but  not  on  account 


10  of  the  twenty  maohinos  referred  to  in  tho  25th  folio 
and  only  ns  in  tlio  thirteenth  article  hereof  is  more 
fully  sot  forth),  and  also  that  tho  Western  Union  Tolo- 
grnph  Company  has  manufactured  many  mnohiucs 
embodying  tho  improvements  referred  to  in  tho  fifth 
subdivision  and  is  now  using  tho  snmo,  nnd  donios  nil 
the  other  allegations  of  tho  fourteenth  article. 

Tenth.  Donios  that  before  the  1st  day  of  July, 
nolr  nt  any.fimo  boforo  tll°  23d  day  of  January, 
1870,  he  had  notico  of  tho  alleged  agreements  botwoon 
liaison .  and  Harrington,  referred  to  in  folio  20,  nnd 
says  that  tho  Western  Union  Tolograph  Company 
1  does  claim  to  bo  tho  ownor  of  the  inventions  nnd  im¬ 
provements  mentioned  in  tho  applications  there  ra¬ 
ff1'1'0.11  to,  and  this  by  virtue  of  agreements  botwoon 
itself  and  Edison,  and  between  itself,  Edison  and  this 
defendant;  and  that  tho  ngroomout,  in  virtuo  of  which 
said  company  becnmo  suoli  owner,  was  closed  and- 
consummated  before  tho  protended  rescission  by 
Edison  of  his  ngroomout  with  this  defendant,  nnd  bo¬ 
foro  the  instruments  G  audH  were  Bled  in  tho  United 
States  Patent  Office. 

,  Elcvcnl/i.—And  for  a  further  answer  to  tho  com- 
l  la  t  tl  dofeudaut  says,  upon  his  information  and 
1  ^  .th  1  f°r  “oro  tlmu  a  year  nest  preceding  May, 
18,4,  the  defendant  Edison  had  been  making  oxpori- 
r  th°  Plu'P°S0  ot  improving  and  adding  to  tho 
oapadtms  of  tbo  so-called  Stearns  duplex  system  of 
clog inphy  and  0f  making  new  discoveries  and  inven- 

ans' “  •POX,tqr‘ll'Upl0S  an(1  ot]lor  motl8a  ot  multiple 
an  m’ssmn  of  electric  signals  on  the  same  wire  ;  that 
thes  ex!  crime  ,ts  ha  1  been  carried  on  by  him  under 
TolZTn  W“h  11,0  tlofon<lant  «><>  Western  Union 
comnanv’’  1,uloi“aft"  referred  tons  “the 

S,  !0r°^,“  llad  bao"  “S^ood  that  all  such 
eomnanv  a?  ‘°"i  ^  mad°  for  tlla  baaa^  of  the  said 
P  y.  with  the  uso  of  tolographio  material, 


apparatus,  operators  and  other  facilities  furnished  by  18 
it,  and  that  all  tho  inventions  nnd  improvements  of  the 
character  nbovo  named,  which  should  result  from  such 
experiments,  wore  made  for,  nnd  wore' to  be  the  prop¬ 
erty  of  snid  company  ;  nud  that  from  nbout  tho  winter 
nnd  Bpring  of  1873  until  tho  spring  of  1874,  the  said 
Edison  had  boon  at  work  upon  such  experiments,  and  ' 
had  made  certain  of  tho  dosirod  improvements  and 
inventions  whilo  working  under  snid  arrangement  with 
tho  defendant  company. 

.  During  tho  month  of  May,  1874,  Edison  solicited 
this  defendant  to  assist  him  with  his  skill  nnd  expe¬ 
rience  ns  an  electrician,  nnd  to  join  him  in  his  experi¬ 
ments  nnd  work  under  his  agreement  with  tho  com-  lfj. 
pnny,  and  offered  to  share  equally  with  this  defendant 
tho  profits  to  bo  dorived  from  tho  inventions  nnd  im¬ 
provements  mado  under  such  arrangement  with  the 
company  nnd  otherwise;  and  it  resulted  from  such 
propositions  of  Edison  that  on  or  nbout  the  first  day  of 
June,  1874,  Edison  nnd  this  defendant  agreed  togotlior 
that  further  experiments  of  tho  diameter,  nnd  for  tho 
•  purpose,  nbovo  described  should  bo  prosecuted  by 
thorn  jointly,  and  that  wlintoyor  profits  should 
nccruo  from  the  inventions  nnd  improvements  made  by 
them  or  either  of  thorn  during  such  experiments,  nnd 
including  tho  price  to  bo  pnid  by  tho  defendant  com¬ 
pany,  should  bo  divided  equally  between  them ;  and 
shortly  nftor,  an  ngroomont  of  this  tenor  was  put  into 
writing  nnd  signed  by  oach  of  tho  said  parties .  in  the 
form  sot  forth  in  Exhibit  E,  and  was  recorded  in  tho 
Unitod  States  Patent  Offico  on  tho  twonty-ninth  day 
of  August,  1874,  in  Libor  E  18,  pago  G2  of  Bogisters 
of  Patonts.  After  tbo  making  of  these  agreements, 
Edison  frequently  stated  to  this  defendant  that  he  nnd 
this  defendant  wore  working  for  tho  defendant  com¬ 
pany  on  such  terms  of  his  arrangement  with  it  ns  are 
nbovo  described,  and  that  all  inventions  and'improvo- 
monts  whioh  resulted  from  his .  and  their  experiments, 
and  especially  all  of  thorn  whioh  related  to  duplex  or 


16  other  modes  of  multiple  transmission,  word  boing  1 
for  and  were  to  bo  tho  property  of  the  dofondnul 
culsivoly,  and  that  tho  defendant  company  was  to 
for  all  such  inventions  and  improvements  and  lo 
patent  as  might  bo  procured  thorofor,  such  pric 
should  bo  just.  1 

fomln0nt‘“Trvtl10  Said  nS1'00'“onts  between  this 
ondant  and  Edison  woro  communicated  to  the  dob 
ant  company  at  or  about  their  several  dates,  an 

Fresco  t  i  V  "'  thf°nftor  witI'  Edison 
lof61'ono°  to  Edison’s  agreen: 

be°t«lln»  'Tr!1- ^ «W^eb»pa1^l^ 

-dinveutimLahe0^  £  7  72  ^727 

Edison  alo^n  in  Wm  tho  P1"™ 

2^^^.^-Sinss 

the  service  of  el!  '’  ap|mratu3  Hues,  an 
ises  and  its  own  expense  *  °"  lts  owu  P10tt 

and^vlillfworkhiK  ?'™!,somout  '««*  this  dofondanl 
m°nt  as  LeIointLrBet1;rPa“rUPnCl0r  h“  «*« 
ant  becamo  Associated  with  ““‘l  nft,°5  ll,,s  clofoml 
aforesaid,  tho  dofoudantErli^  "'!tlor,hls  agroomont! 
ahlo  improvements  dio  °n  did  mako  cortnin  valu 
neotod  with  du  ‘ ‘8’  ttud  ^outions  con. 

“uplex  and  quadruples  and  other  modes 


of  multiplo  transmission ;  and  during  this  poriod,  and  10 
boforo  tho  nineteenth  day  of  August,  ,1874,  had  in¬ 
vented  tho  so-called  quadruples  mode  of  transmission, 
and  all  tho  improvumouts  described  in  tho  applica¬ 
tions  Nos.  94  to  100,  both  inclusive ;  and  beforo  tho 
30tli  day  of  September,  1874,  ho  furnished,  jointly  ivith 
this  defendant,  to  tho  company  all  necessary  drawings, 
descriptions,  uud  spccilicntious  for  experimental  or 
practical  uso  by  it  of  apparatus  embodying  tho 
snid  inventions  described  in  the  applications  num¬ 
bered  94  to  100,  both  inclusive,  and  particularly  tho 
quadruplox  invention  and  tho  improvements  described 
in  application  No.  99.  And  tho  defendant  company, 
under  Edisou’d  direction  and  assistance,  during  tho  ,,g 
months  of  September  and  October,  1S74,  constructed 
many  sots  of  machines  mid  apparatus  embodying  many 
of  said  improvements  and  inventions,  and  particularly 
tho  quadruplox  and  tho  improvements  described  in  np- 
plicntion  No.  99,  and  with  tho  full  knowledge  and  con¬ 
sent  of  said  Edison  put  thorn  into  practical  uso  oil 
its  lines  and  in  its  ordinary  business,  as  boing  its 
own  property,  mid  such  uiacliinos  and  apparatus 
havobcou  so  used  by  tho  defoudnnt  company  ovor 
Binco  that  time  with  Edison’s  full  knowledge  and  con- 
sont. 

And  defendant  says,  upon  Ins  information  and  belief, 
that  all  tho  uinttors  aforesaid  iu  respect  to  tho  dis- 
cpvorics  by  Edison,  and  tho  appropriation; with  hisknow- 
ledgo  and  consent,  to  tho  uso  of  tho  defendant  company 
of  tho  nppnratus  and  machines,  and  tlioimprovonionts 
and  inventions  embodied  iu  them  ns  boforo  described, 
woro  well  known  to  Uils 'plaintiff  and  to  George  Har¬ 
rington  at  or  about  tho  dates  of  said  sovcrnl  ovouts, 
and  that  noitlier  of  thorn  beforo  January  tho  twenty- 
third,  1875,  ovor  questioned,  or  claimed  anything  to 
tho  coutrary  of,  Edison’s  or  of  dofondnnt  company’s 
right  to  do  ns  tjioy  respectively  bad  douo,  as  aforesaid. 

Aid’ tho  dofondaut  further  says  that  after  his 
dealings  witli  Edisou  began,  in  or  about  May,  1874,  aud 
throughout  that  year  to  its  ond,  Edison  of  toil  roitoratod 


•***>  ■  ■  ■  T  ■'  '■  •■  ■■  , 


8 

22  the  naturo  and  terms  of  his  ngroomont  with  tho  do- 
fondant  company  to  tho  samo  effect  as  is  set  forth 
in  folios  12,  13,  16  and  16  hereof ;  and  aftor  tho 
agreement  of  August  19tb,  1874,  this  dofondunt  and 
Edison  on  tho  one  part,  aud  the  defondant  company 
on  tho  other  part,  always  dealt  togotlior  on  tho  under¬ 
standing  and  basis  of  9uch  agreement,  and  at  all 
times,  aud  up  to  and  after  tho  20th  January,  1876,  it  ’ 
was  agroed  and  understood  by  this  dofondunt  and 
Edison  on  tho  one  part,  and  tho  'defendant  company 
on  tho  other  part,  that  all  the  inventions  of  Edison  in 
connection  with  duplex  aud  quadruples  telegraphy  or 
other  modes  of  multiple  transmission,  and  especially 

23  of  tho  inventions  described  in  tho  applications  Nos.  94 
to  100,  both  inclusive,  reforrcd'to  in  tho  ninth  articlo  of 
the  complaint,  hnd  boon  made  for  and  bolonged,  upon 
their  making,  to  tho  defendant  company,  and  that  Ed¬ 
ison  was  bound  under  his  original  agreement,  and  this 
defondant  was  bound  with  him  by  virtuo  of  thoir 
agreement  of  August  the  nineteenth,  1874,  to  Becuro 
all  said  improvements  and  inventions  by  proper  instru¬ 
ments,  and  by  assignment  of  letters  patent  thorofor, 
when  procured,  to  the  defendant  company. 

And  this  boing  tho  agreement  and  understanding  of 
all  the  parties,  and  there  boing  no  point  undetermined 
botweon  thorn  in  respect  to  said  inventions  and  im- 

24  provoments  and  letters  patent,  except  tho  ascertaiuiug 
the  preoiso  amount  to  bo  paid  for  thorn ;  and  it  having 
been  also  understood  and  agreed  that  this  should  bo  : 
ascertained  in  due  timo  oithor  by  ngreomont  of  the 
parties,  or,  if  that  failed,  by  arbitration — on  tho  tenth 
day  of  December,  1874,  tho  said  Edison,  and  about  tho 
sixteenth  day  of  January,  1875,  this  defendant,  askod 

1  and  received,  of  tho  defondant  oompany  tho  respective 
payments  of  fivo  thousand  dollars  eaoh,  in  anticipation 
of  the  fixing  of  the  definite  price  aforesaid,  and  on  no- 
count  thereof,  and  then  severally  oxcautcd  and  delivered 
to  tho  defendant  company  tho  instruments,  copies 
whereof  aro  hereto  annexed  marked  Exhibits  A  and  B 


9 

And  on  the  sixteenth  and  thirtieth  days  of  Decem¬ 
ber  1874  this  defendant  and  Edison  submitted  propo¬ 
sitions  in  writing  as  to  tho  amount  of  such  price, 
copies  whereof  are  hereto  annexed  marked  Exhibits 
0  and  D;  and  the  last  of  said  propositions  remain¬ 
ing  open  up  to  the  19th  of  January,  1876,  and 
the  agreement  and  understanding  of  Baid  parties,  as 
to  tho  exclusive  right  aud  ownership  of  the  company 
in  ond  to  all  tho  inventions  und  improvements  there¬ 
tofore  made  by  said  Edison  connected  with  duplex 
and  qnadrupiox  telegraphy,  remaining  as  aforesaid 
on  said  19th  of  January,  1875,  said  company  acceptod 
tho  second  of  said  propositions  submitted  by  the  offor 
of  December  30th,  and  so  notified  this  defendant  and  26 
Edison.  And  this  defendant  has  ovor  since  that  time 
always  been  and  now  is  ready  to  make  a  l  proper  and 
necessary  instruments  to  seouro  tho  title  of  said  im¬ 
provements  and  inventions  to.  the  defendant  company 
in  virtuo  of  its  said  agreements  with  Edison,  and  with 
Edison  and  this  defendant. 

Twelfth. — And  for  further  answer  this  defendant 
says  that  Edison  had  full  power  aud  right  to  make 4 ho 
agreements,  and  especially  the  agreement  of ^ug'Urt 
19th,  1874,  which  he  did  mako  with  this  defends  , 
and  that  neither  at  that  date,  nor  at  any  8  , 

the  1st  January,  1873,  did  any  auoh  agreement  as  that  ^ 
referred  to  in  the  third  article  of  the  complamh  pr 
plaintiffs-  Exhibit  A,  exist  between  Ecbsonand  Har- 
rington  ;'and  that  no  such  instrument  ns 

in  the  fourth  article  of  the  complaint  was  execut  1  by 

Edison,  either  to  fulfill  or  to  cany  out  sue ^  alleged 
agreement  of  Ootober  1st,  18  0,  ^tW»ote 
agreement  between  Edison  and  any  t  P  ,. 
bade  or  invalidated  any  snob  agreements  as  Edison 

made  with  this  defendant  ns  herein  alleged. 

And  the  defendant  further  alleges  that  neHhmof 
tho  alleged  agreements  Bet  forth  in  plaintiff 


Exhibit  A. 


10 

Mbits  A  and  B,  contomplnto  or  covor  any  inventions 
or  improvements  known  ns  duplox  or  qnndruplex  sys¬ 
tems  or  modes  of  transmission,  or  any  oilier  modo  of 
multiple  transmission,  or  any  of  tbo  inventions  or  im¬ 
provements,  described  in  tho  agreement  of  August 
19th,  1874,  mndo  by  Edison  sinco  January,  1878,  or 
any  of  those  dosoribod  in  the  applications  numbored 
94  to  100,  both  inolnsivo,  referred  to  in  tho  ninth  nrti- 
ole  of  tho  complaint. 

Wherefore,  this  defendant  demands  judgment  that 
the  oomplnint  be  dismissed. 

Porter,  Lowrey,  Soiien  &  Stone, 

'  Attys.  for  deft.  Prescott. 

State  op  New  York,  ) 

City  and  County,  of  Now  York,  |ss-  :  .  ■'  ^ 

George  B.  Prescott,  being  duly  sworn,  says  :  that  ho 
is  the  defendant  abovo  named ;  that  tbo  foregoing  an¬ 
swer  is  truo  to  his  own  knowledge,  oxcept  ns  to  tho 
matters  therein  stated  on  information  and  belief,  and 
that  as  to  those  matters  iio  believes  it  to  bo  true. 

Sworn  to  before  me,  this  1  yO  „ 

yJH ay  of  May,  1879.  f 

Notary  Public, 

N.Y.Co. 


PRELIMINARY  RECEIPT. 

N.  Y„  Deo.  10, 1874. 

Whereas,  Thomas  A.  Edison  and  Georgo  B.  Pres¬ 
cott  nro  tho  Inventors  of  certain  improvements  in 
Telegraphy,  minting  to  Duplox  and  Quadruples  tele¬ 
graphing,  for  which  Lotters  Patent  of  tho  TJiiitod 
States  have  been  nppliod  for  by  said  Inventors ;  and 
Whereas,  said  Edison  and  Prescott  linvo  agreed  to 
assign  all  their  right,  titlo  and  interest  in  and  to  said 
Inventions  and  Letters  Patent  to  the  Western  Union  82 
Tolograpli  Company,  provided  tho  torms  of  payment 
for  such  assignment  und  transfer  shall  bo  satisfactorily 
adjusted  between  tho  said  parties  and  tho  said  Tele¬ 
graph  Company r 


I,  tho  said  Thomas  A.  Edison,  hereby  acknowledge 
tho  receipt  of  Gvo  thousand  dollars,  to  mo  in  hand  paid, 
in  part  payment  for  my  interest  in  tho  said  assignment 
and  transfer. 

Witness  my  hand  and  seal  this  tontli  day  of  Decem¬ 
ber,  1874. 

Tnoanvs  A.  Edison,  [l.  s.] 

Witness,  33 

A.  R.  Brewer. 

City  and  County  of  Now  York,  ss.: 

On  this  21st  day  of  January,  1876,  before  me  per¬ 
sonally  appoarod  A.  R.  Brower,  to  mo  personally 
known,  and  known  to  mo  to  bo  tho  subscribing  witness 
to  tlio  foregoing  instrument,  who,  boing  by  me  duly  ' 
sworn,  said  that  ho  resided  '  in  tho  oity  of 
Brooklyn,  in'  tho  State  of  Now  York ;  that  ho 
was  acquainted  with  Thomas  A.  Edison,  and 
know  him  to  bo  the  person  described  in  and  whp 


executed  said  instrument;  and  that  ho  saw  him 
exeoute  and  dolivor  the  same ;  and  that  ho  acknowl¬ 
edged  to  him,  said  A.  E.  Browor,  that  ho  executed  and 
delivered  the  same ;  and  that  thereupon  he,  said  A.  B. 
Brower,  subscribed  his  name  as  a  witness  thereto. 

H.  M.  Haim, 
Notary  Publio,  N.  X.  Co. 


B.  H.  Boohebteb,  37 

Treasurer. 

On  the  delivery  to  you  of  this  paper,  pay  George  B. 
Proscott  tho  sum  of  five  thousand  dollars  ($5,000). 

(Signed,)  William  Outon, 

President. 

January  10, 1875. 

Beceivod  fivo  thousand  dollars,  Now  York,  January 
16, 1875. 

(Signed,)  GEonaE  B.  Pbescott. 


Exhibit  B. 

35 

PEELIMINABY  EEOEIPT. 

New  XorR,  January  1G,  1875. 

Whereas,  Thomas  A.  Edison  and  George  B.  Prescott 
are  tho  joint  owners  of  certain  improvements  in  tolo- 
graphy,  relating  to  duplex  and  quadruple!  tolegrnph- 
mg,  for  which  letters  patent  of  tho  United  Stntos  havo 
been  applied  for  by  said  Thomas  A.  Edison ;  and 
Whereas,  said  Edison  and  Proscott  have  agreed  to 
assign  nil  their  right,  title  and  interest  in  and  to  said 
inventions  and  lotlors  patent  to  tho-  Western  Union 

36  ®jloSraPl1  Company,  provided  tho  terms  of  pnymont 
for  such  assignment  and  transfer  shall  bo  satisfactorily 
adjusted  botweon  tho  said  parties  and  tho  said  Tolo- 
graph  Company. 

•  I,  the  said  Georgo  B.  Prescott,  hereby  acknowledge 
the  receipt  of  fivo  thousand  dollars  to  mo  in  hnnd  paid, 
m  part  payment  for  my  interest  in  tho  said  assignment 
and  transfer. 

uary  1876  ^  lm“a  and  80ftl  tbis  sixteenth  day  of  Jan- 
Witnoss-  (Signed)  Geohoe  B.  Pbescoit. 

(Signed)  Geiiiut  Smith. 


Paid,  Januaiy  1G,  1875,  by 

E.  H.  Eoohester, 

Treasurer. 

Exhibit  C. 

New  Xouk,  December  16,  ’74. 

Hon.  Wm.  Outon, 

Frost.  W.  U.  Tol’gli  Co. 

D’r  sir, — Your  company  has  now  ovor  25,000  miles 
of  wiro,  which  can  now  bo  profitably  “  Quadruplexod.” 

Considering  tlioso  25,000  milos  to  be  alroady  Du¬ 
plexed,  the  Qundruplox  will  creato  50,000  miles  addi¬ 
tional. 

For  nil  our  pntonts,  and  offorts  in  protecting  tho  com¬ 
pany  in  the  monopoly  of  tho  snino  during  their  life,  wo 
will  take  1-20  of  tho  average  cost  of  maintenance  of 
50,000  miles  of  wiro  for  17  years,  one-third  down  and 
tho  balanco  in  yearly  payments  during  the  above  men¬ 
tioned  period.  “  Half  of  suoli  payments  to  cense  the 
momont  any  other  porson  shall  invent  and  put  into 
practical  operation  a  quadruple!  (not  infringing  onr 
pntonts),  upon  n  oirouit  of  400  miles  in  length.” 

Yours,  eto., 

(Signed)  Tnos.  A.  Edison., 
Geo.  B.  PitEscorr. 


14 


40  Exhibit  D. 

Two  propositions : 

1st.  "Wo  will  take  twonty-fivo  thousand  down  and 
twonty-fivo  thousand  in  six  months  for  nil  Patents, 
and  a  royalty  on  duplex  of  $166  por  year  for  each  cir¬ 
cuit  created. 

2d.  'We  will  take  twenty-five  thousand  down  for 
all  patents,  and  a  royalty  of  $283  por  yoar  for  oncli 
circuit  oreatod. 


Stojjfrior  Court  of  offdu  |oiiu 


Tiik  Atlantic  and  Pac 
(iKAi-ii  Com  pan 


Gkouoe  B.  Piussoott,  Tin:  Wkstkiin 
Unton  TKr.KditAVii  Com  pax  y,  Lem-  j 
uel  W.  Sun  hem.,  and  Tiios.  A.  Edi-  I 


l'.  Tlie  defendant,  the  said  Thomas  A.  Edison,  an¬ 
swering  the  complaint  herein,  admits  that  the  plain¬ 
tiff  is  a  corporation,  as  alleged  in  the  said  complaint ; 
and  that  the  defendant,  The  Western  Union  Tele¬ 
graph  Company,  is  also  a  corporation,  as  therein 
alleged  ;  and  this  defendant  also  admits  the  allega¬ 
tions  in' paragraphs  3,  4  and  5  of  the  said  complaint,  4 
subject  to  the  explanations  and  qualifications  here¬ 
inafter  stated. 


6  And  this  defendant  admits  that  on  the  1st  day  of 
October,  1870,  he  made  and  entered  into  a  contract 
with  one  George  Harrington,  as  alleged  in  the  com¬ 
plaint. 

And  this  defendant  says  that  the  said  Harrington 
and  his  associates  thereafter  and  uj>  to  the  19th  of 
August,  1874,  and  afterwards,  expended  through, 
this  defendant  and  under  his  directions  large  sums 
g  money  in  developing  this  defendant’s  inventions 
in  and  relating  to  Electric  Telegraphy,  including  his 
inventions  in  Duplex  and  Qundruplex  Telegraphy. 
And  that  on  the  4th  of  April,  1871,  thisdefendantexe- 
cuted  and  delivered  an  assignment,  with  a  power  of 
attorney,  to  said  Harrington,  as  alleged  in  the  said 
complaint.  And  this  defendant  says  that,  the  said 
Harrington  held  the  said  assignment  and  power  of 
attorney  as  a  trustee  for  the  benefit  of  tills  defend¬ 
ant,  jointly  with  the  said  Harrington  and  various 
1  *  is  1  ,  supplied  the  greater  part  of  the  funds 
expended  in  developing  the  said  inventions. 

2.  The  title  in  and  to  the  patents  for  said  inven¬ 
tions  was  vested  in  the  said  George  Harrington  and 
this  defendant  in  the  proportions  of  two  thirds  in 
thu  said  George  Harrington,  and  the  remaining  one- 
third  m  the  said  T.  A.  Edison.  And  thesaid  George 
Harrington  hold  the  title  to  and  power  to  dispose  of 
tin.  said  patents  and  inventions,  so  as  to  preserve 
tlie  unity  of  the  title  thereto. 

And  it  was  originally  understood  and  agreed  that 
the  saul  patents  and  inventions  should  be  held  by 
the  said  George,  Harrington  in  trust,  to  be  disposed 
ol.foi*  the  benefit  of  his  said  associates,  in  eonjunc- 
tion  with  himself,  in  certain  shares  and  proportions, 
such  trust  being  deemed  necessary  by  the  said  Har¬ 
rington,  and  his  associates,  and  this  defendant,  to 
avoid  thu  great  difiiciilties,  loss,  damage  and  injury 
consequent  upon  thu  legal  exercise  of  thu  power  of 


disposition  held  by  any  one  of  several  parties  jointly  9 
holding  the  titlo  to  a  patent  for  an  invention. 

And  it  was  agreed  by  and  between  thu  parties 
aforesaid  that  tho  said  patents  and  inventions  should 
be  sold  and  transferred  to  a.  telegraph  company  or 
companies,  in  consideration  of  money  or  stook,  or 
royalties,  to  be  distributed  amongst  the  said  George 
Harrington,  this  defendant,  J.  C.  Keiff,  John  Mc¬ 
Manus  nnd  others,  their  associates  as  aforesaid,  ac- 
cording  to  their  several  shares,  rights,  and  interests 
therein. 

And  the  said  patents  and  inventions  have  always 
been  held  by  the  said  George  Harrington  in  trust 
as  aforesaid,  and  lie  lias  at  all  times  recognized  that 
relation  and  acted  accordingly,  and  has  in  conse- 
qence  thereof,  been  intrusted  from  time  to  time  by 
his  said  associates  with  the  possession  of  large  sums 
of  money,  amounting  to  some  hundreds  of  thousands  u 
of  dollars,  to  be  disbursed  by  him  in  and  about  the 
purposes  of  the  said  trust.  And  this  defendant  has 
from  time  to  time  taken  out  many  patents  in  the 
names  of  himself  and  the  said  Harrington,  011  the 
faith  of  the  said  trust,  and  the  due  performance 
thereof.  And  the  said  Keiff,  McManus,  and  Harring¬ 
ton,  nnd  their  associates,  have  supplied  the  funds  to 
pay  for  the  said  patents,  and  for  models  and  draw¬ 
ings,  and  fees  of  patent  agents  and'  solicitors,  and 
have  paid  the  expenses  of  experiments  to  test,  the  12 
inventions. 

3.  By  a  certain  memorandum  of  agreement  bear¬ 
ing  date  noth  December,  1874,  under  the  hands  of 
Jay  Gould,  the  said  J.  0.  Keiff  and  John  McManus, 
it  was  declared  that  it  was  thereby  understood 
that  they  should  heartily  co-operate  in  concluding 
an  alliance  between  the  Atlantic  and  Pacific  Tele¬ 
graph  Company  and  the  Automatic  System  on  the 
basis  therein  mentioned.  And  it  was  therein  men- 


13  honed  flint  the  price  to  be  paid  for  tlie  patents  for 
the  Automatic  System,  contracts,  &e.,  should  be 
40,000  shares  of  the  stock  of  the  said  company. 

The  si  1  mini  i  with  the  propositions 
therein  contained,  approved  and  confirmed  by  the 
said  George  Harrington  and  his  associates. 

4.  It  was  understood  and  agreed  by  and  between 

14  hie  said  Keiif  and  McManus  and  Gould,  that  the 
said  proposed  sale  to  the  Atlantic  and  Pacific  Tele¬ 
graph  Company  for  the  said  40,000  shares  of  stock, 
should  embrace  certain  patents  for  this  defendant’s 
inventions  m  Electric  Telegraphy,  which  are  speei- 
ieiL  ni  certain  deeds  dated  respectively  1st  January, 
187o,  and  nth  April,  1870,  purporting  to  be  tnins- 
iers  hy  said  Harrington  to  said  Gould,  and  which 
deeds  were  delivered  to  said  Gould  for  a  special 
purpose,  as  hereinafter  mentioned,  and  that  said 

15  *!"°  H,,0ldd  diso  embrace  certain  patents  and  inven- 

ons  °f .George  Little,  in  or  relating  to  chemical 
automatic  telegraphy,  and  also  a  certain  telegraph 
line  from  Lew  York  to  Washington,  with  its  offices 
•mil  appurtenances. 

The  said  The  Automatic  Telegraph  Company  held 
U3  said  line  of  telegraph  under  a  certain  contract 
tor  the  purchase  thereof  by  them  from  tile  National 
in  f,?k‘g''ai,"  Coml>imy,  and  also  held  the  right  to  use 
r  e  smd  patented  inventions  of  the  said  George 
w  tie,  under  contract  with  the  lust-named  company 

for  the  purchase  thereof. 

,jVld  tl;u  Automatic  Telegraph  Company  also 
IT  .  vfld>ld  revocable  license  from  the  said  George 
to  i,‘n?  0n>  ')’tb  tbe  llss,:nt  of  life  said  associates, 
to  use  the  said  inventions  of  this  defendant  upon 
1-S1  r^U8ml,hline-  And  this  defendant  np- 
.  l,'-‘ snid  biu'Sain  11Ild  of  the  apportion- 
f  of  lhe  s,dd  stock,  ns  hereinafter  mentioned. 


f,.  Shortly  after  tlie  said  agreement  of  SOtli  De-  17 
cember,  1874,  was  entered  into  as  aforesaid,  it  was 
arranged  by  and  between  the  said  George  Harring¬ 
ton  and  his  said  associates  and  tlie  said  Jay  Gould, 
that  the  said  40,000  shares  to  be  paid  for  tlie  several 
properties  aforesaid,  should  bo  divided  and  appor¬ 
tioned  as  follows,  viz.:  that  81,800  of  the  said  shares 
should  be  paid  for  the  said  patents  and  inventions 
of  this  defendant,  and  8,200  of  the  said  shares  for 
the  rights,  titles,  and  interests,  as  aforesaid,  of  the 
Automatic  Telegraph  Company  and  of  the  National  18 
Telegraph  Company,  and  or  the  said  George  Little 
and'  liis  assigns. 

ft.  It.  was  arranged  by  and  between  the  said 
George  Harrington  and  liis  associates,  and  tlie  Au¬ 
tomatic  Telegraph  Company  and  tlie  said  Jay  Gould, 
that  the  Atlantic  and  Pacific  Telegraph  Company 
should  have  the  l  ight  to  purchase  the  said  property 
on  tlie  terms  aforesaid,  and  should  be  let  into  pos-  ^ 
session  of  the  said  telegraph  line  and  offices,  and 
have  temporarily  tlie  right  to  use  the  said  inven¬ 
tions  upon  their  telegraph  lines,  until  the  comple¬ 
tion  of  the  said  purchase. 

7.  And  this  defendant  admits  that  on  or  about 
the  1st  day  of  January,  1875,  tlie  said  Geo.  Harrmg- 
ton  on  his  own  belmir  ind  is  attorney  to  th  a 
defendant  executed  and  delivered  to  J.  &ould 

deed  of  assignment  bearing  date  that  day,  of  winch  20 

a  copy  is  annexed  to  the  said  complaint. 

And  this  defendant  says  that  the  said  d,®d  dld®d 
1st  January,  1875,  was  made  maccortoicevi  t he 
said  agreement  of  80tli  December,  1874,  and  in  the 
expectation  that  tlie  bargain  thereby  pmposea  vv o  Id 
be  promptly  fulfilled,  and  upon  thes  pae  Go  at 
such  transfer  conditionally  vosUuK  « i *»d 

Gould  for  the  benefit  of  the  intended  puicluisei, 
die  Atlantic  and  Pacillo  Telegraph  Company,  would 


21  strengthen  tin;  case  against  The  Western  Union 
■telegraph  Company,  which  company  falsely  claimed 
to  have  made  a  contract  with  this  (defendant  for  the 
purchase  of  the  said  inventions  from  him. 

8.  It  was  not  understood  and  agreed  by  and  be; 
tween  the  and  Harrington  and  Gould  upon  the  treaty 
Gnnm  Sa'd  d,eed  ?f  lst  January,  1875,  that  the  said 
as  “5  t*le  nominal  consideration  of  one 
23  '  T1  m  rho  said  aeed,  to  become  the  owner 

T'  inventions  in  duplex  and  quadruple* 
ehgraphy  for  lus  own  individual  benefit.  Nor  mis 
understood  and  agreed  by  and  between  them  that 
“d  Harrington  should  undertake  to  sell  and 
1  ‘  "j,  Si,.ul  inventions  without  receiving  any 
oiisideintum  therefor  for  the  benefit  of  this  defend- 
nssn  *  f  Si"fd  ,Rellr  a,ld  McManus  and  others,  the 
the  oii  •  °.r,  H'e  SUid  Harrington,  who  had  supplied 
■}.  “'P1!*  Part  o|-  the  funds  required  for  and 
2a  usui  m  the  development  of  the  said  inventions. 

b„K  R!‘tu U  ";a»  understood  and  agreed  bv  and 
when  t  e  le-SiiUi  Harri,lgton  aud  Gould,  before  and 
c l  ed  H  Saul1deea  °X  l8t  Juuuury,  1875,  was  oxe- 
Conm,„t  lati  th?1Atlantic  »»d  Pacific  Telegmph 
S2?  :S  0UlabtVe  benefit  of  the  transfer 
rnentim,  1ade>  uPon  l,ie  completion  of  the  bargain 
1874t  wvV"  ‘  f  SUid  “ficocment  of  30th  December, 
24  this  dl,  1lLTb.ra,!eda11  the  Mentions  made  by 
wlmt  is  commonly  known  as 
annliuihle  «  Xe  ®®l1lpliy,  and  all  his  inventions 
in  *dimi  10-,eto»  and  embraced  the  said  inventions 
beimSinn^  T",d,'U1>lex  to!egiupliy,  tlie  same 
e»ig  applicable  to  Automatic  Telegraphy. 

defen,WS?ilemad,en8  hereinafter  mentioned  by  this 
dehindm  tl, rough  said  Gould,  his  attorney,  to 

tmnsfm  e  M  •ttSviateUdod  t0  be.  «nd  '«  in  fact,  a 

P  reeds  of  d10nd,mt’s  sl,a>-e  °f  one  third  of  the 
I  cuus  of  any  sale  or  other  disposition  whichmight 


be  completed  by  the  said  Harrington  under  the  said  25 
trust  and  power  hereinbefore  referred  to. 

11.  And  this  defendant,  further  answering,  ad¬ 
mits  that  lie  did,  ns  alleged  in  the  7th  paragraph 
of  the  said  complaint,  on  the  4th  January,  1875, 
execute  and  deliver  to  the  said  Gould  an  irrevocable 
power  of  attorney,  of  which  a  copy  is  annexed  to 
the  said  complaint. 

26 

12.  And  this  defendant  admits  the  allegations 
contained  in  the  0th,  10th,  lltli,  12tli,  18th,'  14th, 
lfitli,  10th  mid  17th  paragraphs  of  tin;  said  „o...- 
plnint,  except  that  part  of  paragraph  13  which  re¬ 
lates  to  I,.  W.  Serrell,  and  which  this  defendant 
denies.  And  except  that  part  of  said, paragraph  16 
alleging  that  the  Western  Union  Telegraph  Com¬ 
pany  closed  or  consummated  the  alleged  agreement 
therein  referred  to.  And  this  defendant  says  that  ^ 
eucli  alleged  agreement  was  not  closed  or  consum¬ 
mated  at  all.  And  this  defendant  also  admits  that 
barograph  8  contains  a  correct  description  of  duplex 
and  qundruplex  telegraphy,  and  the  meaning  of  tlie 
word  “  fast”  as  applied  to  tlie  same,  and  its  applica¬ 
bility  to  the  automatic  system  of  telegraphy. 

And  this  defendant  says  that  he  made  the  contract 
with  the  said  Prescott,  dated  10th  August,  1874,  in 
consequence  of  mistakes  made  mutually  by  himself  28 
and  the  said  Prescott,  in  regard  to  the  true  contents 
of  tlie  skid  deed  of  4th  April,  1871,  and  tlie  legal 
effect-  thereof. 

13.  The  said  George  Harrington  being  in  ill  health 
and  about  to  leave  the  United  States,  it  was  deemed 
prudent  and  advisable  to  obtain  from  him  a  transfer 
of  the  patents  and  inventions  of  this  defendant 
hereinafter  referred  to,  ready  to  take  effect  upon 
the  completion  of  the  said  proposed  or  intended 


I.urclins.!  by  tlio  Atlantic  and  Pacific  Telegraph 
Company,  and  also  a  transfer  from  the  Automatic 
telegraph  Company  of  its  rights  and  title  as  afore¬ 
said,  unto  the  Atlantic  and  Pacific  Telegraph  Com¬ 
pany,  to  be  delivered  upon  the  payment  by  them  of 
the  said  31,800  shares,  and  8,200  shares  of  stock, 
winch  they  could  not  under  their  bv-Inws  issue 
without  a  compliance  with  certain  provisions  therein 
which  involved  considerable  delay. 

And  accordingly,  on  or  about  the  0th  day  of 
Apr’i,  187o,  file  said  George  Harrington,  in  the 
.1  .and  expectation  that  the  said  proposed  bar¬ 
gain,  made  on  the  30th  day  of  December,  187-1,  would 
lie  fulfilled  by  the  saiil  the  Atlantic  and  Pacific 
telegraph  Company,  did  individually  andasattor- 
ney  for  this  defendant,  execute  a  certain  deed  Inur¬ 
ing  date  0th  April,  1875,  purporting  to  be  an  assign¬ 
ment  to  the  said  Jay  Gould  of  the  patents  and  in¬ 
ventions  of  this  defendant  therein  referred  m.  for 
the  nominal  consideration  of  one  dollar. 

And  the  said  deed  was,  by  an  instrument  in  writ- 
f  w  e''  ,mnd  llud  of  this  defendant,  bear- 
g  date  loth  April,  1875,  approved,  ratified  and 
confirmed  by  this  defendant. 


14.  1  he  said  George  Harrington,  on  the  10th  day 
I’1’.?875’  1"lnded  the  said  deed  of  9th  April, 
r  h  S1‘,rt  Jay  «0|ild,  as  a  trustee  or  agent 
will  ei  71tl,l'ltic  ,,,,d  Telegraph  Company, 

dral.,i  ?  o'  the  Sllid  Guo'B«  Harrington  ad- 
dassal  to  the' said  Jay  Gould,  and  signed  by  the 
s  m  George  Harrington,  requesting  him  to  withhold 
the  said  assignment  until  the  Atlantic  and  Pacific 
le  egraph  Company,  should  deliver  to  him,  the 
ei  (  Jay  Gould,  31, 800  shares  of  the  stock  of  the 
said  Company  and  then  to  deliver  the  said  assign- 
noiit  to  them  And  in  and  by  the  said  letter  the 
said  Jay  Gould  was  directed  to  hold  the  said  81,800 


9 

shares  of  the  stock,  to  be  delivered  to  the  said  83 
George  Harrington,  J.  C.  ReilT,  John  McManus 
and  others  named  therein,  m  the  shares  and  pro¬ 
portions  tliurein  mentioned. 

If).  The  said  Jay  Gould  did  not  pay,  or  premise 
or  agree  to  pay,  to  the  said  George  Harrington,  any 
consideration  whatever  for  the  said  assignment  to 
the  said  Jay  Gould  of  the  said  patent  rights  held 
by  the  said  George  Harrington  in  trust  as  aforesaid.  g4 
Nor  did  the  said  Jay  Gould  pay,  or  promise,  or 
agree  to  pay,  to  the  said  Thomas  A.  Edison,  any 
consideration  whatever  for  his  said  ratification  there¬ 
of.  Nor  did  the  said  Jay  Gould  promise  or  agree 
that  the  Atlantic  and  Pacific  Telegraph  Company 
should  pay  any  consideration  therefor.  Nor  did 
the  Atlantic  and  Pacific  -Telegraph  Company  pro¬ 
mise  or  agree  to  purchase  the  patent  rights  and  in¬ 
ventions  embraced  in  the  said  deed  of  9th  April, 
1875,  for  any  price  or  consideration,  lint  it  was  gg 
understood  and  agreed  by  and  between  the  said 
Geoige  Harrington  anil  his  associates  and  the  said 

Jay  Gould  that  the  Atlantic  and  Pacific  Telegraph 
Company  should  have  the  right  to  purchase  the 
same  upon  payment  of  the  consideration  specified  in 
the  said  letter  of  the  10th  April,  1875. 

10.  When  the  said  Jay  Gould  entered  into  the  said 
contract,  dated  December  30,  1874,  lie  was  tally 
aware  of  tlio  rights  of  the  said  J.  C.  Iteitf  and  John  36 
McManus,  and  their  associates  having  had  direct 
notice  thereof  from  the  said  J.  C.  Koiff  and  John 
McManus,  and  from  the  said  George  Harrington,  and 
otherwise.  And  the  said  George  Harrington,  on  or 
about  the  12th  day  of  January,  1875,  wrote  a  letter 
to  the  said  Jay  Gould,  referring  to  the  said  contract 
of  80th  December,  1874,  and  expressing  lus,  the  said 
George  Harrington’s,  approval  thereof. 


And  the  said  letter  of  instruction,  dated  10th 


37  April,  187 5,  written  by  the  said  George  Harrington 
to  tile  said  Jay  Gould,  and  delivered  to  him  ns 
aforesaid,  with  the  said  deed,  dated  Oth  April,  1875, 
was  drawn  up  with  the  consent  and  approbation  of 
the  said  Jay  Gould,  and  was  received  by  him,  with 
the  said  deed,  upon  his  promise  and  undertaking  to 
abide  by  and  follow  the  terms,  stipulations,  con¬ 
ditions  and  directions  therein  contained. 


17.  The  plaintiiT  had,  prior  to  taking  any  action 
in  regard  to  the  said  patents  and  inventions,  and  the 
said  telegraph  line  from  New  York  to  Washington, 
and  the  business  thereof,  full  and  direct,  as  well  as 
constructive  notice  of  the  facts  and  circumstances 
aforesaid  in  relation  to  the  said  agreement  of  30th 
December,  1874,  and  the  said  deeds  and  tin1  said 


18.  It  was  assumed  by  the  said  Harrington  and 

39  us  associates,  and  by  the  said  Jay  Gould,  that  the 
bin-gain  specified  in  the  said  agreement,  dated  30th 
December,  1874,  would  be  consummated,  and  ac¬ 
cordingly  the  plaintiff  was  put  in  possession  of  the 
property  agreed  to  be  sold  to  it  us  aforesaid. 

19.  The  Atlantic  and  Pacific  Telegraph  Company 
have  been  applied  to  frequently  by  the  saidJ.  C. 

,i‘'  *or  himself  and  his  said  associates,  to  com- 

40  1  i,te ,  ,  8a'd  bargain  and  to  pay  the  consideration 
called  for  by  the  said  deed  of  Oth  April,  1875,  and 
the  said  instrument  of  writing  delivered  therewith 
to  the  said  Jay  Gould;  but  the  said  company,  by 
ito  officers  and  agents,  have,  from  time  to  time  set 
up  various  reasons  and  pretexts  tor  delaying  and 
postponing  suoli  settlement,  sometimes  pretending 
Hint  they  would  settle  as  soon  as  Mr.  Eckert,  the 
president  of  the  said  company,  should  recover  from 
his  sickness,  and  be  able  to  attend  to  business  ;  and 
at  other  times  pretending  that  they  were  waiting 
tor  Mr.  Harrington  and  his  associates  to  preform 


their  part  of  the  contract ;  but  at  last,  and  when  41 
these  pretexts  could  answer  no  further  purpose, 

'the  said  Atlantic  and  Pacilic  Telegraph  Company, 
by  their  President  and  other  officers  of  the  said 
company,  declared  that  the  said  company  would 
not  complete  the  said  proposed  purchase  without  a 
large  abatement  of  the  price. 

And  the  Atlantic  and  Pacilic  Telegraph  Company 
having  declared  that  they  will  not  pay  the  consider-  ^ 
ation  agreed  upon  this  defendant  claims  and  innate 
that  the  said  transfers  from  the  said  Harrington  to 
the  said  Gould  are  inoperative  and  that  the  plaint  ff 
has  no  equitable  title  to  the  said  inventions,  and 
nas  no  right  to  maintain  this  action. 

20.  And  this  defendant  further,  answering,  says 
that  being  entitled,  as  aforesaid,  to  one  third  pin  t 
share  of  the  beneficial  interest  in  tin  said  unc 
of  duplex  and  quadruples  telegraphy  muhn  the 
provisions  of  the  said  deed  of  4th  April, :  ,  > 

defendant,  authorized  the  said  Jay  C<ml 
and  transfer  the  same  tor  830,000,  to  S.  M.  Mil  , and 
accordingly  this  defendant  gave  to  sail  ’ 

above  mentioned,  a  power  of  attorney,  dated  4rii 

January.  1875,  authorizing  him  to  sol  and  rai wfO; 
allot  this  defendant’s  right,  title,  and.nte^tinoi 
to  the  said  inventions  in  duplex  and  quad... plex 
telegraphy.  44 

And  this  defendant  thereuponreceivedfromthe 

said  Gould  the  said  sum  of  830,000.  ’  And  l  e  said 
Mills  by  deed  dated,  11th  January,  MW. “J 
recorded  until  April,  10,  1875,  transfernkl  «U  lus 
rights,  title,  and  interest  in  and  to  the  said 
unto  the  Atlantic  and  Pacific  Telegraph  Company. 

21.  And  this  defendant,  further  answerii^jys 
that  the  saiddeed  dated  Oth  March,  1875,  .efe.ied 


1 


12 


13 


45  in  tlie  sixth  paragraph  of  the  complaint  in  this  rase, 
and  purporting  to  ben  transfer  from  said  Harrington 
to  said  Gould  of  the  said  inventions,  was  made,  as 
appears  on  the  face  of  the  said  deed,  merely  for  the 
purpose  of  correcting  a  verbal  error  in  the  former 
deed,  dated  1st  January,  1875. 


City  and  County  of  New  York,  ss : 

Thomas  A.  Edison,  the  defendant  above  named, 
being  duly  sworn,  says  that  the  foregoing  nnswei  is 
true  except  sis  to  those  matters  therein  stated  on 
Station  and  belief,  and  ns  to  those  matters  he 


22.  And  this  defendant  denies  the  allegation  in  the 
complaint,  that  the  said  Gould  did,  in  consideration  of 

46  the  said  assignments,  to  hint  by  the  said  Harrington, 
dated  1st  January,  1875,  and  9tli  March,  1875,  pay 
and  deliver  to  the  said  Harrington  a  valuable  and 

lit  consideration  for  the  same.  And  this  de¬ 
fendant  denies  that  those  deeds  were  ratified  and  ap¬ 
proved  by  Him  for  any  purpose  or  object  other  than 
the  purpose  and  object  hereinbefore  stated.  And 
this  defendant  says  that  it  was  understood  and 
agreed,  by  and  between  the  said  Harrington  and 
Gould,  that  the  said  deeds  were  not  to  become 

47  operative  until  the  Atlantic  and  Pacific  Telegraph 
Company  should  pay  the  consideration  for  the  same 
stipulated  as  aforesaid. 


Sworn  to  before  me  this  1 
day  of  1876.  f 


23.  As  to  the  allegations  of  the  said  complaint  not 
herein  expressly  admitted  or  denied,  this  defendant 
has  no  knowledge  or  information  sufficient  to  form 
a  belief. 


ii~S£S$S!« 


fjl.  f}..  jfcijrerwr  Cfltttl 


Tnc  Atlantic  &  Pacific  Tele- 

g  HAITI  Co. 

,  Answer  of  the 

■  Wes tom  Union 

Tiie  Western  Union  Telegraph  ToleeraP'1  Co- 
Company,  impleaded,  &e.,  and 


The  defendant,  tho  Western  Union  Telegraph  Com¬ 
pany,  for  its  answer  to  tho  complaint  herein  : 

First. — Admits  the  allegations  contained  in  the  first 
and  second  articles  thereof. 

Second. — Denies  any  knowledge  or  information  sulfi- 
.cient  to  form  a  belief  of  nny  of  tho  allegations  con¬ 
tained  in  the  third,  sixth  and  seventh  articles,  and  in 
thnt  part  of  tho  eighth  article  ending  with  tho  words, 
"  gold  and  stock  company,”  in  tho  9th  folio. 

Third. — Denies  all  the  allegations  of  the  fourth  and 
fifth  artioles,  and  all  the  allegations  of  the  eighth 


10  oott  did  pay  the  fees  and  assist  Edison  as  alleged  in  ' 
subdivision  2,  down  to  and  including  the  words  "  in-  ‘ 
ventions  and  iinproromonts'1  in  folio  23 ;  that  it  paid 
to  Edison  $5,000  (not  on  account  of  tho  twenty 
machines  rofarrod  to  in  tho  25th  folio,  bnt  only  as  in  tho 
thirteenth  article  hereof  is  moro  fully  set  forth),  and  that 
this  defendant  has  manufactured  and  is  using  many 
machines  embodying  the  improvements  referred  to  in 


that  this  defendant  or  said  Prescott  refused  to  rece 
suoli  sums  of  money,  or  any  part  thereof,  alleged 
have  been  so  offered  by  him. 

Twelfth. — And  for  furthor  auswer  the  defendant  si 
that  on  tho  4tli  day  of  April,  1871,  no  such  agreem 
ns  that  referred  to  in  tlio  third  article  of  the  compln: 


16  benefit  mid  uao  of  tho  dofondant;  and  on  its  part  tho  de¬ 
fendant  agreed  to  furnish  to  Edison  facilities  and  material 
for  tlie  prosecution  of  such  experiments,  and  the  dovel- 
opmentfor  practical  uso  in  its  business,  of  all  his  discov¬ 
eries  and  inventions  which  should  result  therefrom :  and 
itwns  at  the  same  time  further  agreed  by  both  said  par¬ 
ties  that  all  such  experiments  and  discoveries,  anil  all 
tho  improvements  and  inventions  which  should  result 
therefrom,  and  especially  ail  of  those  which  related  to 
duplex  or  other  modes  of  multiplo  transmission,  should 
be  made  for  tho  defendant  and  Dot  for  said  Edison ; 
that  all  such  improvements  and  inventions  should, 
upon  the  making  thereof,  bo  tho  property  of  the  de- 

17  feridant  exclusively,  and  thut  whatever  letters  pntent 
for  them  the  said  Edison  should  bo  entitled  to  by 
law,  as  inventor,  should  bo  applied  for  by  him  and  be 
transferred  to  the  defendant;  and  thnt  for  nil  such 
inventions,  improvements  and  letters  patent  ho  should 
receive  such  price  as  should  bo  just,  nnd  the  amount 
thereof  should  bo  ascertained  in  due  time  either  by 
agreement  of  the  parties,  or  if  that  failed,  by  arbitration. 
These  terms  of  the  said  agreement  between  the  de¬ 
fendant  nnd  Edison  wore  repeatedly  confirmed  by 
them  during  the  years  1873  nnd  1874  nnd  up.  to  tho 
20th  day  of  January,  1876.  And  this  defendant  and 
Edison,  up  to  tho  time  of  tho  agreements  with  Pres¬ 
cott  as  hereinafter  set  forth  ;  and  after  these  ng — 
ments,  this  defendant  and  Edison  nnd  Prescott,  t 
together  in  respect  to  all  of  Edison's  experiments, 
provomonts  and  inventions  connected  with  duple: 
qundruplox  telegraphy,  on  tlm  basis  and  in  pursm 
of  such  terms  of  said  original  agreement  with  Ed 
as  are  nbovo  sot  forth. 

In  pursuance  of  this  agroomout  tho  said  Edison 
gnu  his  experiments  in  or  about  the  month  of  Eo 
ary,  1873,  and  continued  them  from  time  to  time 
mg  tho  greater  part  of  thnt  year,  and  into  tho  wi 
of  1873  and  1874;  and  at  his  reouest.  and  f 


>bout  the  month  of  February,  1874,  and  throughout 
;hat  yonr,  the  defendant  furnished  to  him  larger  facil¬ 
ities  in  material,  the  use  and  scrvicoof  its  lines,  oper¬ 
ators,  workshops,  machinists  and  othor  employes,  nnd 
especially  in  tho  assistance  of  its  electrician,  George 
B.  Prescott;  and  during  this  period  nnd  before  Sop- 
tombor,  1874,  Edison  hud  made  certain  of  the  desired 


about  June,  1874,  tho  said  Edison  t 
igrccd  jointly  fwith  this  defendant  to  j 
io  condition  of  Edison’s  agreement  witli 
d. 

out  the  1st  day  of  June,  1874,  and  conti 
until  after  the  10th  day  of  August,  1874 


12 

34  their  pretended  title  to  the  inventions  involved  in  this 

eotion. 

On  the  28th  day  of  January,  1876,  tho  defondant 
Edison,  having  over  since  said  20th  day  of  January 
kept  himself  concealed,  so  that  no  tendors  of  any  sort 
on  the  part  of  this  dofondiint  might  be  mado  to  him, 
this  defendant  demanded  of  Prescott  a  conveyance  to 
it  of  tho  interests  agreed  to  bo  conveyed  to  it  by  said 
Prescott  and  Edison,  and  then  tendered  to  him  tho 
money  stipulated  for  by  tho  offer '  of  Decomber  80, 
and  offered  to  oxecuto  a’  proper  agroemont  securing 
the  royalty  also  provided  for  by  that  offer;  thereupon 
the  said  Prescott  declared  his  willingness  to  sign  and 
gg  execute  all  necessary  instruments  to  seouro  to  this  de¬ 
fendant  the  inventions  aforesaid  and  letters  patent 
therefor,  and  to  accept  said  money  and  agreomont 
for  the  royalty;  but  that  as  the  agreomont  between  him 
and  Edison  required  tho  joining  of  Edison  in  such  as¬ 
signment,  and  Edison  refused  so  to  join  with  him,  no 
such  instrument  could  bo  effectually  made. 

Fourteenth. — And  the  defendnut  further  says,  upon 
its  information  and  belief,  that  beforo  the  dates  or  mak¬ 
ing  nt  any  time  of  any  of  the  pretended  agreements 
between  Edison  and  Gould,  or  Harrington  and  Gould, 
which  nro  alleged  in  tho  complaint,  tho  snid  Gould 
3q  was  folly  informed  of  Edison’s  then  existing  agreement 
with  this  defendant,  and  also  of  his  agreement  with 
Prescott,  all  ns  lieroinboforo  sot  forth;  and  of  all 
his  relations  with  this  defendant  and  Prescott,  in 
virtue  of  said  agreements ;  and  was  also  informod,  at 
or  about  tho  several  dates  of  suoh  ovonts,  of  the  pay¬ 
ments  to  himsolf  and  Presoottof  the  respective  sums 
of  $5,000,  on  account  of  the  price  to  bo  paid  by  this 
defendant  for  his  inventions  and  patents;  and  of  the 
-  execution  and  delivery  of  tho  instruments  marked 
Defondant’s  Exhibits  A,  B,  0,  D  nud  E,  copies  of  each 
of  which  were  also  delivered  or  exhibited  to  snid  Gould, 
at  or  about  their  several  dates ; .  and  also,  that  this  do-  ' 


13 

fcndnnt  was,  by  virtue  of  its  said  original  agree¬ 
ment  with  Edison,  and  of  the  subsequent  agreements 
between  him  and  Prescott,  the  owner  of  inventions 
in  duplex  and  quadruplex  telegraphy  made  since 
January,  1873, and  entitled  to  Letters  Patent  there¬ 
for,  and  particularly  of  those  mentioned  in  the  ap¬ 
plications  Nos.  04  to  100,  both  inclusive,  involved  in 
this  action ;  and  that  all  these  tilings  were  fully 
known  to  said  Gould  before  December  31, 1874,  ex¬ 
cept  the  letter  of  January  10,  1875,  and  that  that 
was  known  to  him  at  or  about  its  date,  and  that  all 
of  them  were  known  to  him  before  the  execution  or 
.  delivery  to  him,  by  said  Harrington  and  Edison,  or 
either  of  them,  of  any  such  instrument,  falsely  pur¬ 
porting  to  have  been  executed  on  or  about  January 
1,  1875,  or  such  instrument,  said  to  be  dated  March 
0,  1875,  as  are  referred  to  in  the  0th  article  of  the 
coinphiint;  and  before  the  execution  or  deliveiy 
to  him  by  said  Edison  of  any  such  instrument  of 
January  4tli,  as  is  referred  to  in  the  7th  article  of 
the complaint ;  and  before  lie  paid  any  money  either 
to  said  Harrington  or  Edison,  in  consideration  of 
either  of  such  instruments,  or  on  account  of  the 
inventions  or  patents  in  either  of  said  instruments 
referred  to  or  alleged  in  the  complaint. 

The  defendant  further  alleges  that  the  said  Mills 
was  before  and  at  the  time  of  the  alleged  assignment 
to  him  of  January  0,  1875,  m  intimate  conlideutial 
relations  with  said  Gould,  and  in  virtue  of  this,  and 
as  his  broker  and  otherwise,  was  accustomed,  upon 
an  understanding  to  that  effect  between  them  to  make 
transactions  and  advance  moneys  in  his  own  name 
but  for  Gould’s  account  and  benefit ;  that  any  such 
assignment  to  Mills  as  that  alleged  in  the  seventh 
article  was  taken  in  virtue  of  the  conlideutial  rela¬ 
tions  and  understanding  aforesaid,  at  Gould’s  re¬ 
quest  and  for  his  puiposes,  and  as  the  intermediary 
between  Gould  (acting  in  the  name  of  Edison) 
and  The  Atlantic  and  Pacific  Telegraph  Company ; 
for  the  accommodation  of  both,  and  at  their  request, 
and  not  for  himself ;  and  with  notice  on  the  part  of 


14a 


53  Mills  of  all  the  matters  relating  to  the  dealings  be- 
tweed  Edison  and  this  defendant  or  Preseott  which 
are  above  set  forth  in  this  article  ;  and  if  he  paid 
any  consideration  for  such  assignment,  which  this 
defendant  upon  its  information  and  belief  denies, 
without  paying  any  such  consideration  for  his  own 
benefit  but  only  on  C-tould’s  account,  and  in  virtue 
of  his  relations  aforesaid,  and  on  the  understanding 
that  whatever  advance  was  so  made  by  him  should 
be  reimbursed  him  by  Gould  or  the  plaintiff,  and 

54  that  he  was  to  assign  whatever  interest  passed  to  him 
by  said  instrument  to  the  plaintiff,  or  to  such  otlier 
person  as  Gould  should  designate. 

And  the  defendant  further  alleges  that  this  plain¬ 
tiff  and  its  executive  ofiicers  had  notice  before  Dec. 
31st,  1874,  of  all  the  matters  which  are  averred  in 
this  article  to  have  been  known  to  Gould  in  respect 
to  the  relations  of  Edison  with  the  defendant  and 
Prescott,  and  at  and  before  the  execution  and  deliv¬ 
ery  to  said  Gould  of  any  of  the  alleged  instruments 

55  of  January  1st,  March  Oth,  and  January  4tli,  1875, 
described  in  the  Sixth  and  Seventh  Articles,  and  at 
and  before  the  delivery  to  said  Mills  of  the  alleged 
instrument  of  January  Oth,  1S75,  described  in  the 
Seventh  Article,  and  at  and^  before  the  delivery  to 
it  by  said  Mills  or  said  Goidd  of  either  of  the  in¬ 
struments  purporting  to  be  dated  January  lltli  and 
July  10th,  described  in  the  Seventh  and  Eighth  Ar¬ 
ticles  ;  and  that  the  plaintiff  and  its  executive  offi¬ 
cers  at  the  time  of  the  alleged  assignment  of  Jnnu- 

50  ary  Oth  to  Mills,  and  at  the  time  of  the  alleged  as¬ 
signment  by  Mills  to  it,  had  notice  of  all  the  mat¬ 
ters  relating  to  said  assignment  to  Mills  which  are 
in  this  article  before  alleged. 

Fifteenth.— Ani[  for  further  answer,  this  defendant 
says,  that  at  or  before  the  respective  times  of  the 
making  of  the  said  agreement  by  it  with  said  Edison, 
and  by  it  with  said  Edison  and  Prescott,  ns  stated 
m  tlm  thirteenth  article  of  this  answer,  and  of 
the  said  furnishings  by  it  of  facilities  and  material, 


and  of  the  said  payments  by  it  of  §5,000  each  to  57 
said  Edison  and  to  said  Prescott,  and  at  all  times 
before  the  20th  day  of  January,  1875,  this  defendant 
had  no  notice  whatsoever  of  the  agreements  or  instru¬ 
ments  of  October  1,  1870,  and  April  4,  1871,  alleged 
in  the  3d  and  4th  Articles  of  the  complaint,  or  of  any 
claim  by  said  Harrington  of  any  light,  title  or  inter¬ 
est  in,  or  to  the  said  inventions,  or  any  of  them,  or 
of  any  other  agreement,  incumbrance,  assignment, 
conveyance  or  instrument  whatsoever,  or  of  any 
claim  by  said  Harrington  whatsoever  that  in  any-  68 
wise  affected  the  said  inventions  and  patent  rights 
and  interests  so  purchased  by  this  defendant  as 
nforesnid,  or  any  of  them,  or  any  part  thereof ;  ex¬ 
cept  that  this  defendant  was  informed  of  the  terms 
of  said  agreements  between  Edison  and  Prescott  at 
or  about  tho  time  of  the  execution  thereof ;  and  this 
defendant  insists  that  it  is  a  bona  fide  purchaser  of 
tho  aforesaid  inventions,  patent  rights,  interests 
and  promises,  for  a  good  and  valuable  consideration, 
and  without  any  notice  of  either  of  said  alleged  in-  39 
struments  and  agreements  between  said  Harrington 
and  Edison,  or  of  any  claim  by  said  Harrington  of 
any  right,  title  or  interest  in  tho  said  inventions, 
rights  and  interests  or  any  of  them. 

And  for  a  further  answer,  this  defendant  says, 
uiion  its  information  and  belief,  that  at  or  before  the 
respective  times  of  the  making  of  said  agreements  be¬ 
tween  said  Edison  and  Prescott,  and  of  the  fuliillment 
of  the  terms  of  said  agreements  by  said  Prescott,  and 
at  all  times  before  the  said  23rd  day  of  January,  GO 
1875,  the  said  Prescott  lmd  no  notice  of  either  of 
tho  said  instruments  dated  Oct.  1,  1870,  and  April 
4,  1871,  between  Harrington  and  Edison,  alleged  in 
the  3d  and  4tli  Articles  of  tho  complaint,  or  of  any 
claim  by  said  Harrington  of  any  right,  title  or  inter¬ 
est  in  the  said  inventions  or  any  of  them,  or  of 
any  other  agreement,  incumbrance,  assignment,  con¬ 
veyance  or  instrument  whatsoever,  or  of  any  claim 
by  said  Harrington  whatsoever,  that  in  any  wise 
affected  the  said  inventions,  or  any  of  them,  or  any 


Exhibit  A. 


61  part  thereof,  and  that  said  Prescott  was  a  bona  fide 
purchaser  of  the  inventions,  patent  rights  and  inter¬ 
ests  mentioned  and  described  in  said  instrument  of 
August  19,  1874,  subject  only  to  the  covenants  and 
provisions  therein  set  forth,  for  a  good  and  valuable 
consideration,  and  without  any  notice  of  the  said 
alleged  instruments  between  Edison  and  Harring¬ 
ton  or  of  either  of  them,  or  of  any  claim  by  said 
Harrington  of  any  rigid,  title  or  interest  in  said  in-  ( 
ventions,  rights  and  interests  or  any  of  them. 

62  Wherefore  this  defendant  demands  judgment  that  , 
the  complaint  be  dismissed. 


PORTER,  LOWREY,  SOREN  &  STONE, 

Ally's  for  W.  U.  Tel.  Co. 

State  op  New  York,  ) 

City  and  Comity  of  New  York,  )  ss ' 

v/f-mrtrmj  being  duly  sworn,  says :  That  the 

6o  defendant,  is  a  corporation,  and  that  he  is  the  dri  cgf 
/i&tidibflhereol' ;  that  the  foregoing  answer  is  true,  to 
his  own  knowledge,  except  as  to  the  matters  therein 
stated  on  information  and  belief,  and  that  as  to  those 
matters,  he  believes  it  to  be  true. 

/(bcLcuSoC/o/} 

64  J'trteZf 

iMffQ 


PRELIMINARY  RECEIPT. 

N.  Y.,  Deo.  10, 1874. 


Whereas,  Thomas  A.  Edison  and  George  B.  Prescott 
aro  tlio  inventors  of  cortnin  improvements  in  tele- 
.  gyaphy,  relntiug  to  duplex  and  qundruplex  telegraph¬ 
ing,  for  which  letters  patont  of  the  United  States  have 
heeu  applied  for  by  said  inventors ;  and 

Whereas,  Said  Edison  and  Prescott  have  agreed  to 
assign  all  thoir  right,  title  and  intorost  in  and  to  said 
invention  and  lottors  patont,  to  tlio  Western  Union 
Tolograph'  Company,  providod  the  terms  of  payment 
for  such  assignment  and  transfer  shall  bo  satisfactorily 
adjusted  betweon  tho  said  parties  and  tlio  said  Tele¬ 
graph  Company : 

I,  the  said  Thomas  A.  Edison,  horeby  aoltnowiedgo 
tho  receipt  of  five  thousand  dollars  to  mo  iu  hand  paid 
in  part  paymont  for  my  intorost  iu  tho  said  assign¬ 
ment  and  transfer. 

Witness  my  hand  and  sonl  this  tonth  day  of  Decem¬ 
ber,  1874. 

Thomas  A.  Edison,  [l.  s.j 


Witness :  . 

A.  R.  BnEWEii. 

City  and  County  of  New  York,  ss.: 

On  this  21st  day  of  January,  1876,  boforo  mo  per¬ 
sonally  nppoared  A.  R.  Browor,  to  mo  personally 
known,  and  known  to  mo  to  bo  tho  subscribing  wit¬ 
ness  to  tlio  foregoing  instrument,  who,  being  by  mo 
duly  sworn,  said :  That  ho  rosidod  in  tho  oity  of 
Brooklyn  in  tho  State  of  Now  York;  that  ho  was  ao- 
quaintod  with  Thomas  A.  Edison  and  know  him  to  bo 
tho  person  dosoribod  in  and  who  oxoouted  said  instru¬ 
ment.  and  that  ho  saw  him  oxoouto  and  deliver  the 


i  same,  and  that  lie  acknowledged  to  liim,  said  A.  R. 
Brewer,  that  he  executed  and  delivered  the  same,  and 
that  thereupon  he,  said  A.  R.  Brower,  subscribed  his 
name  as  a  witness  thereto. 

'  H.  M.  Haiqii, 

Notary  Public, 

N.  Y.  Co. 


S  New  York,  January  16, 1876. 

Whereas,  Thomas  A.  Edison  and  George  B.  Prescott 
are  the  joint  owners  of  certain  improvements  in  Tele¬ 
graphy,  relating  to  duplex  and  quadruples  telegraph¬ 
ing,  for  which  letters  patent  of  the  United  States  have 
been  applied  for  by  said  Thomas  A.  Edison and 
Whereas,  said  Edison  and  Prescott  have  agreed  to 
assign  all  their  right,  title  and  interest  in  and  to  said 
inventions  and  letters  pntent,  to  the  Western  Union 
Telegraph  Company,  provided  the  terms  of  payment 
for  such  assignment  and  transfer  shall  bo  satisfactorily 
adjusted  between  tho  said  parties  and  tho  said  Tele¬ 
graph  Company : 

'  I,  tho  said  George  B.  Prescott,  hereby  aoknowledgo 
the  receipt  of  five  thousand  dollars  to  me  in  hand  paid 
in  part  payment  for  my  interest  in  the  said  assignment 
and  transfer.  , 

Witness  my  hand  and  seal  this  sixteenth  day  of  Jan¬ 
uary,  1870. 

(Signed,)  / 

Geouqe  B.  Prescott, 

Witness, 

(Signed,)  Gerrit  Smith.  ' 


R,  H.  Rochester, 

Treasurer: 

"On  the  dolivory  to  you  of  this  papor,  pay  Georgo  B. 

Prescott  the  sum  of  fivo  thousand  dollars  ($5,000). 

(Signod,) 

William  Orton, 

President. 

Jan.  16, 1876.  ,  _ 

Rocoivcd  fivo  thousand  dollars,  Now  York,  January, 
16th,  1875. 

(Signod), 

George  B.  Prescott. 

.  Paid,  Jan.  16, 1876,  by 


Hon.  Wm.  Orton, 

Presfc.  Union  Tol’gli  Co.: 

D’r  Sir, —Your  ,  company  has  over  25,000  miles  of 
wire,  which  can  now  bo  profitably  “  Qiiadruplexcd. 

Considering  tlieso  26,000  miles  to  bo  already  du¬ 
plexed,  tho  quadruples  will  pronto  50,000  miles  addi- 
,  tional.  ^ 

For  all  our  patents  and  offorts  in  protecting  tlie  com¬ 
pany  in  tho  monopoly  of  the  same  during  their  life,  wo 
will  take  l-20th  of  the  average  cost  of  maintenance  of 
60,000  miles  of  wire  for  17  years,  one-third  down  and 
tho  balance  in  yearly  payments  during  tho  above  men¬ 
tioned  period.  "  Half  of  such  payments  to  cease  tho 
moment  any  other  person  shall  invent  and  put  into 
praotioal  operation,  a  quadiuplox  (not  infringing  our 
patents),  upon  a  oirouit  of  400  miles  in  length. 

Yours,  etc., 

(Signed)  Tnos.  A.  Edison. 

Geo.  B.  Prescott. 


2d.  Wo  will  take  twenty-five  thousand  down  for  all 
patants,  and  a  royalty  of  §233  per  year  for  each  oironit 
created. 


Thomas  A.  Edison,  Esq.,  and  George  B.  Prescott 
Esq. : 

Gentlemen,— Boferring  to  the  negotiations  and  ar¬ 
rangements  heretofore  made  between  you  nnd  tho 
Western  Union  Telegraph  Company,  for  tho  sale  and 
transfer  to  that  company  of  all  your  patents  relating 
to  the  duplex  nnd  quadruples  telegraphy,  subioot  to 
definite  ascertainment  of  tho  compensation  to  bo  paid, 
and  especially  to  tho  two  offers  in  .writing  made  by 
fows°n  01  abPUt  tU°  3°th  day  of  Dooembor  last- 03  f°l- 

«  ^  tako  twout;y-fiva  thousand  down 

and  25,000  in  six  months  for  all  patonts,  nnd  a 
royalty  on  duplex  of  $1GG  per  year  for  oach  oirouit 
“created. 

“2d.  We  will  tnko  twenty-five  thousand  down  for 

■  fiXS*  “  •*  <«  - : 

■  I  hereby  notify  you,  on  behalf  of  tho  Wostorn  Union 


19 

‘  Telegraph  Company,  that  tho  proposition  for  oompen-  64 
nation  abovo  quoted,  aiud  by  you  mnrkod  “  2d,”  is 
boroby  accepted  as  made,  nnd  the  company  is  ready  to 
close  tho  business  at  your  earliest  convenience,  and  to 
mako  nil  tho  pnymouts  onllod  for,  upon  rocoiving  from 
you  propor  assignments  and  transfers  of  the  said 
patents. 

Yours,  very  respootfully, 

William  Orton, 

President. 


Electrician's  Department, 

Western  Union  Telegraph  Company, 
George  B.  Prescott, 

•  .  Eleotrioinn. 


Hon.  William  Orton,  President. 

Dear  Sir Your  fnvor  of  tho  19th  instant,  accept¬ 
ing,  tho  propositions  heretofore  made  by  Thomas  A. 
Edison  nnd  myself  for  tho  sale  to  tho  Western  Union 

Telegraph  Company  of  certain  inventions,  nnd  all  our 

right,  titlo  nnd  interest  of  every  ohnrnotor  in,  to,  under  gg 
and  connooted  with  all  letters  patent  of  the  United 
Statos,  which  may  bo  granted  to  us  for  improvements 
in  duplox  nnd  qnadmplox  telegraphs,  nnd  fixing  the 
compensation  to  bo  paid  in  accordance  with  our.  pro¬ 
position  mndo  and  marked"  2d,”  on  or  about  the  30th 
day  of  December,  camo  duly  to  hand;  nnd,- in  reply, 

I  have  to  say  that  I  am  ready  to  unite  with  said 
Edison  in  conveying  all  such  patents  or  inventions,  or 
to  assign  my  interest  sopnratoly,  if  I  may  lawfully  do 

Yours,  very  respeottully, 

George  B.  Presoott. 


61  Exhibit  D. 

Two  propositions : 

1st.  Wo  will  tnko  twenty-five  thousand  down  and 
twenty-fivo  thousand  in  six  months  for  all  patents, 
and  a  royally  on  qundruplex  of  S1GG  per  year  for  each 
circuit  created. 


Ninth. — Doilies  tlmt  tlio  ngrcomont  between  hinist 
Edison,  roforrcd  to  in  tlio  fourteenth  article,  was  ox 
under  tlio  ndvico  of  couusel,  who  ivns  also  counsel  I 
defendant,  tlio  ‘Western  Union  Telegraph  Coiapni 
that  such  ngrcomont  was  executed  under  the  nil' 
souiiBcl  for  tho  defendant ;  tlmt  tlio  agreement  betwee 
ran  and  Harrington,  tlioro  referred  to,  did  not  iuelii 
[ilex  and  ipindruplox  tologrnphy,  or  either  of  them, 
Edison  was  misled  into  executing  tlio  said  agio 
between  him  and  this  defendant. 

Ho  admits  that  at  tlio  timo  referred  to  in  tlio  21st  f 
ivas  tho  electrician  of  tho  Western  Union  Telegraph 
inriy :  that  ho  did  pay  tho  feos,  and  assist  Edison, 
loged  in  subdivision  2,  down  to  and  including  tlio 
‘said  inventions  anil  improvements"  in  folio  23;  th 
Western  Union  Telegraph  Company  paid  Edison  ■ 
but  not  on  account  of  tlio  twenty  machines  referred 
;ho  25tli  folio,  and  only  ns  in  tho  thirteenth  nrtiolo  lie 
norb  fullv  sot  forth),  and  also  tlmt  tho  Western 
Holograph  Company  hns  manufactured  ninny  limolini 
jodying  tho  improvements  roforrcd  to  in  tlio  fifth 
rision,  and  is  now  using  the  same,  aud  denies  all  the 
illogations  of  tho  fourteenth  nrticlo. 


12  defendant  says,  upon  his  information  and  belief,  that  foi 
mora  than  a  year  next  preceding  May,  1874,  tlio  dofondant 
Edison  had  boon  making  experiments  for  tho  purposo  of 
improving  nrnl  adding  to  tho  oapaoitios  of  tho  so-called 
Stearns  duplex  system  of  telegraphy,  and  of  making  now 
discoveries  and  inventions  in  dttplox,  qundruploxnnd  other 
inodes  of  .  multiple  transmission  of  electric  signals  on  tlic 
same  wire ;  that  those  experiments  had  been  errried  on  by 
him  under  an  arrangement  witli  tho  defendant,  tho  Western 
Union  Telegraph  Company,  hereinafter  referred  to  ns  “  the 
company',”  whereby  it  had  been  agreed  that  all  such  oxpori 

13  nionts  should  bo  made  for  the  benefit  of  the  said  company, 
and  with  tho  use  of  tolographic  material,  apparatus,  opera 
tors  and  other  facilities  furnished  by  it,  and  that  all  the  in 
voutious  and  improvements  of  tho  character  above  named, 
which  should  result  from  such  experiments,  were  made  for. 
and  wore  to  bo  tho  property  of  said  company ;  nnd  thnt  from 
about  tho  winter  and  spring  of  1873  until  tho  spring  of  1874, 
the  said  Edison  had  been  at  work  upon  such  experiments! 
and  had  made  certain  of  tho  desired  improvements  nnd  in 
volitions  while  working  under  said  arrangement  with  the 
dofondant  compnny. 

14  During  tho  month  of  May,  1874,  Edison  solioited  this  de 
fondant  to  assist  him  with  his  skill  and  experience  ns  an 
electrician,  and  to  join  him  in  his  experiments  and  work 
under  his  agreement  with  tho  company,  and  offered  to  share 
equally  with  tliis  defendant  the  profits  to  bo  derived  from 
tho  inventions  nnd  improvements  inado under  sueli  arrange 
meat  with  the  company  and  otherwise :  nnd  it  resulted  from 


such  propositions  of  Edison  that  on  or  about  the  1st  day  ol 
Juno,  1874,  Edison  and  this  defendant  nerroed  tmwtW  ilmi 


20  discoveries  and  inventions  conneoted  with  duplex  and 
qimdruplox  and  other  inodes  of  multiple-  transmission ; 
and  during  this  period,  and  boforo  tho  nineteenth  day  of 
August,  1874,  had  invented  tho  so-called  quadrnplox  mode 
of  transmission,  and  all  tho  improvements  described  in  tho 
applications  Nos.  04  to  100,  botli  inclusive,  and  boforo  tbo 
thirtieth  day  of  September,  1874,  lie  furnished,  jointly  with 
this  defendant,  to  tho  company  all  necessary  drawings, 
descriptions,  and  specifications  for  experimental  or  practi¬ 
cal  use  by  it  of  apparatus  embodying  tho  said  inventions 
described  in  tho  applications  numbered  94  to  100,  both  in- 

21  elusive,  aud  particularly  tho  qimdruplox  invention  and  tlio 
improvements  described  in  application  No.  99,  and  with 
tho  full  knowledge  and  consent  of  said  Edison  put  them 
into  practical  use  on  its  lines  and  in  its  ordinary  business, 
ns  being  its  own  property,  and  such  machines  and  appara¬ 
tus  have  been  so  used  by  the  defendant  company  ovor  siuco 
that  time,  with  Edison’s  full  knowledge  and  consent. 

And  defendant  says,  upon  liis  information  and  belief, 
tlint  all  tho  inhttors  aforesaid  in  respect  to  tho  discoveries 
by  Edison,  and  tho  appropriation,  with  bis  knowledge  nnd 
consent,  to  tho  uso  of  tho.  defendant  company  of  tho  np- 

22  pnrntus  and  machines,  aud  tho  improvements  and  in  voli¬ 
tions  embodied  in  them,  ns  boforo  described,  were  well 
known  to  this  plaintiff  and  to  Gcorgo  Harrington  at  or 
about  the  dates  of  said  several  ovonts,  and  that  neither  of 
them  boforo  January  tho  twenty -third,  1875,  ovor  questioned 
or  claimed  anything  to  tho  contrary  of  Edison’s  or  of  de¬ 
fendant  company’s  right  to  do  ns  they  respectively  hnd 
done,  ns  aforesaid. 

And  the  defondant  further  says  that  after  his  dealings 
with  Edison  began,  in  or  about  May,  1874,  nnd  throughout 
that  year  to  its  end,  Edison  often  reiterated  the  nature  and 

28  terms  of  his  agreement  with  tho  defendant  company,  to  tho 
same  effect  as  is  sot  forth  in  folios  12, 13, 15  nnd  10  hereof; 
aud  after  tho  agreement  of  August  lOtli,  1874,  this  defend¬ 
ant  nnd  Edison  on  tho  one  part,  nnd  tho  defendant  com¬ 
pany  on  the  other  part,  always  denlt  together  on  tho 
understanding  nnd  basis  of  bucIi.  agreement,  nnd  at  nil 
times,  and  up  to  and  after  tho  20th  January,  1875,  it  was 
ngrecd  and  understood  by  this  defendant  nnd  Edison  on 
tho  one  pnrt,  and  tho  defondnut  company  on  tkoothor  part, 


transmission,  and  especially  of  tho  inventions  described  in 
tho  applications  Nos.  94  to.  100,  both  inclusive,  referred  to 
in  tho  ninth  nrtiolo  of  tho  complaint,  hnd  been  made  for 
and  belonged,  upon  their  making,  to  tho  defendant  com¬ 
pany,  and  that  Edison  was  bound  under  his  original  agree¬ 
ment,  and  this  defendant  was  bound  with  him  by  virtue  of 
tlioir  agreement  of  August  tho  nineteenth,  1874,  to  securo 
all  said  improvements  and  inventions  by  proper  instru¬ 
ments,  and  by  assignment  of  letters  patent  therefor,  when, 
procured,  to  tho  defendant  company.  2i 

*  And  this  boiug  tho  agreement  nnd  understanding  of  all 
tho  parties,  aud  there  being  no  point  undetermined  botwcon 
them  in  respect  to  said  inventions  and  improvements  and 
letters  patent,  except  tho  ascertaining  tho  prcciso  amount 
to  ho  paid  for  thorn ;  and  it  having  been  also  understood 
and  agreed  that  this  should  bo  ascertained  in  duo  time, 
either  by.  agreement  of  tho  parties,  or,  if  that  failed,  by 
arbitration,  on  tbo  tontli  day  of  December,  1874,  tho  said 
Edison,  and  about  tho  sixteenth  day  of  January^  1875, 


this  dcfcudnnt  asked  and  received  of  tho  defendant  c< 
pnnv  tho  respective  payments  of  ilvo  thousand  dollars  21 
each,  in  anticipation  of  tho  fixing  of  tho  definite  price 
aforesaid,  and  on  account  thereof,  nnd  then  severally  exe¬ 
cuted  and  delivered  to  the  dof  1  t  co  i  i  f  tlio  instru¬ 
ments,  copies  whereof  nro  horoto  annexed,  marked  Exhibits 

^ And  oil  tlio  sixteenth  and  thirtieth  days  of  December, 
1«7.1  H.i«  iinfnnilniit  niul  Edison  submitted  propositions  in 


1874,  this  defendant  nnd  Edison  submitted  propositions  u 
'  writing  ns  to  tho  amount  of  sueli  price,  copies  whereof  nr- 

hereto  annoxed,  marked  Exhibits  O  and  D  ;  and  tho  last  of 
said  propositions  remaining  .open  up  to  tho  19  th  of  January, 

1875,  and  tho  ngreomont  and  understanding  of  said  parties  27 
ns  to  tho  exclusive  right  and  ownership  of  tho  company  m 
and  to  all  tlio  inventions  nnd  improvements  tliorctoforo 
made  by  said  Edison,  connected  with  duplex  nnd  qundru- 
plex  telegraphy,  remaining  us  aforesa